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<title>Trademark Product Appearances Features Protection - Article by Professor Fryer</title>
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Articled - Published in 34 John Marshall Law Review 947-971 (2001).
<p>TRADEMARK PRODUCT APPEARANCE FEATURES, UNITED STATES AND FOREIGN PROTECTION
EVOLUTION: A NEED FOR CLARIFICATION AND HARMONIZATION
<p>William T. Fryer, III
<br>Professor, University of Baltimore School of Law.
<br>:
<br> [*948]
<p>INTRODUCTION
<p>Trademark law has recently undergone a significant evolution both
<br>nationally and internationally. In the United States this change resulted
<br>from fundamental case law developments, while the creation and
<br>establishment of international agreements sparked the international
<br>evolution. Trade dress protection also experienced significant change,
both
<br>in the United States and internationally. This Article focuses on the
<br>"product appearance features" aspect of trade dress protection.
<p>Trade dress includes both the product's packaging and the product's
<br>independent appearance, exemplified by the customized design of the
<br>packaging juxtaposed with the product's appearance and surface designs.
The
<br>line between packaging and product appearance features is not easily
drawn.
<br>1 For example, while a bottle is itself a product by way of functioning
as
<br>a container, it could also be construed, for trade dress purposes,
as a
<br>"package" for perfume or liquor.
<p>New terms, concepts, and issues surfaced in product appearance trademark
<br>protection, which resulted in a general change in the direction of
<br>intellectual property law. Questions arise concerning the propriety
of
<br>using trademark protection alone, or using trademark law in combination
<br>with a design patent on the same product appearance. These questions
demand
<br>an understanding of the relationship between trademark law and
[*949]
<br>other fields of intellectual property, particularly patent law and
<br>especially utility and design patents. Another related issue is whether
<br>protection arises at the time of product introduction, as would be
the case
<br>if inherently distinctive product appearance features receive protection,
<br>or whether product appearance features must acquire secondary meaning
<br>within the traditional parameters of trademark protection.
<p>While lawyers and judges review the legal issues, the commercial world,
<br>primarily industrial designers, continues to create several varieties
of
<br>product appearance features in an effort to provide more useful and
<br>attractive products. The essence of trademark law creates the inherent
<br>overlapping of the legal community and the commercial world, and thus,
when
<br>developing or amending trademark law, the legal community must consider
the
<br>industrial designers' perspective.
<p>Before analyzing current developments, a brief introduction of basic
<br>trademark law terms and concepts is necessary to demonstrate how recent
<br>changes in trade dress protection align with prior law. To familiarize
the
<br>reader with basic trademark concepts, this Article first considers
word
<br>marks and progresses to product appearance feature marks.
<p>I. Basic Principles Of Trademark Law For Word And Product Appearance
<br>Feature Marks
<p>A general introduction to basic trademark law will assist in understanding
<br>the more complex issues concerning the trademark protection of product
<br>appearance features. 2 Protection for registered and unregistered marks
<br>under the Lanham Act 3 will be used in the examples.
<p>The word "Sunkist" 4 exists as a trademark for citrus fruits, since
it is
<br>distinctive for such products. While "Sunkist" has a relation to the
use of
<br>the sunlight that makes an orange grow, it does not describe the process
in
<br>a commonly articulated manner. The "Sunkist" mark is used to help customers
<br>identify oranges grown by a producer organization. Consumers benefit
by
<br>avoiding confusion in the product selection process. Additionally,
the
<br>business develops goodwill through the creation of increased sales
due to
<br>consumer identification with the mark. Economically, the company with
the
<br>freshest oranges based on consumer experience is recognized and rewarded
<br>for its quality products, whereas those [*950] companies
with poor
<br>quality products are identified and eliminated from the market. Without
<br>word mark protection, the aforementioned market conditions and the
normal
<br>conduct of business would not be possible.
<p>Mere descriptive words do not receive trademark protection. 5 For example,
<br>the words "ripe" or "fresh" could not be marks for oranges because
these
<br>terms do not identify a product source, which is the essential purpose
of a
<br>trademark. Over time some words that have general meanings might become
<br>marks. For example, "North American" acquired identification with a
product
<br>source through acquisition of secondary meaning. 6
<p>Finally, when a word functions as the name for a type of product, it
does
<br>not receive trademark protection. For example, "generic" terms such
as
<br>"orange," do not receive trademark protection. 7 For practical commercial
<br>reasons, generic terms must be reserved for general use.
<p>When a word is used with a product, it may be protected immediately
from
<br>subsequent marks that are likely to cause confusion. 8 A word that
raises
<br>no descriptive issues and is not generic for a type of product may
receive
<br>immediate protection as a mark. A word attaining this status is commonly
<br>called "inherently distinctive." Generally, a word is given this important
<br>trademark right when its use is associated with a product and consumers
<br>consider it to be a mark. 9
<p>The aforementioned principles define the broad framework of trademark
<br>protection for words and other marks. With word marks, each situation
is
<br>examined on its facts for descriptiveness, [*951] mere
descriptiveness,
<br>generic use, inherent distinctiveness, and secondary meaning. Most
<br>situations are not difficult, and the disputes that do require litigation
<br>often settle because most parties would rather invest their money in
<br>promoting distinctive product marks.
<p>When assessing trade dress marks, the courts try to apply the general
<br>principles used for word marks to the product packaging protection.
10
<br>However, product appearance features require further analysis given
the
<br>dual role (function and appearance) inherent in product design. For
<br>example, scissors must have a shape to achieve cutting action, but
they
<br>also exude the general appearance of the two cross components. Trademark
<br>law would deny protection for the appearance since it is de jure
<br>functional. 11 A product appearance, such as the color of a knife,
could be
<br>denied trademark status because it is merely an aesthetically functional
<br>product feature. 12 In litigation, the trademark owner possesses the
burden
<br>of proof and must establish that the product appearance features are
not
<br>functional, or more precisely "merely functional," in terms of technical
<br>operation or aesthetics. 13
<p>Indeed, products have features that are not primarily related to their
<br>function. For example, watches come in many shapes and watch faces
have a
<br>multitude of appearances designed to attract customers. 14 These product
<br>appearance features are evaluated under the "distinctiveness doctrine"
to
<br>determine if they are merely ornamental or if they can serve as a mark.
<br>Marks have a dual role in that they attract consumers through appearance
<br>while functioning to signify the product's source. While a product
<br>appearance case may involve more issues than a word mark dispute, courts
<br>decide product appearance disputes on their particular facts. Historically,
<br>except on the general principles mentioned, the courts gave little
guidance
<br>relating to product appearance protection. However, a recent group
of
<br>Supreme Court [*952] cases has significantly impacted product
appearance
<br>feature trademark protection. 15
<p>II. Supreme Court Product Appearance Features Case Law Development
<p>Prior to a recent group of Supreme Court cases, some product appearance
<br>features were protected. These rights arose either immediately, if
the
<br>features were inherently distinctive, or after acquiring secondary
meaning.
<br>Features that were merely functional, either due to aesthetics or
<br>utilitarian function, were not protected. From a competitive viewpoint,
<br>these features were considered commercial necessities and, hence, beyond
<br>the scope of protection. Before the Supreme Court recently spoke on
the
<br>issue, the line between merely functional, unprotectable, product
<br>appearance features and protectable appearance features was rather
gray.
<br>One of the initial debates was whether product color could qualify
as a
<br>mark. 16
<p>A. Qualitex Co. v. Jacobson Prods. Co., Inc.
<p>In Qualitex, the Supreme Court settled the color debate, at least
<br>partially. 17 Specifically, the Supreme Court held that color could
be a
<br>mark if it is non-functional, but also recognized that color generally
had
<br>an aesthetic or utilitarian function. 18 In reaching this conclusion,
the
<br>Court applied the general principles used for marks in the past. In
<br>Qualitex, the colors white and green were used for pads placed on laundry
<br>clothing presses. There was no design shape associated with the mark.
The
<br>product manufacturer used the colors on press pads for many years,
and the
<br>Court found that secondary meaning did exist. The only question was
whether
<br>color could be a mark as a matter of law. Some considered colors
<br>unprotectable, because of the limited number of colors available for
use
<br>and the difficulty in identifying between color shades. 19
<p> [*953] Qualitex established a broad foundation for the protection
of
<br>product appearance features. Particularly, it reaffirmed the notion
that
<br>merely functional marks could not be protected. Thus, colors such as
red
<br>fire extinguishers or black and white for electrical cable, could not
be
<br>marks since they were colors used to identify the nature or characteristics
<br>of the product. In Qualitex, the colors associated with the press pads
had
<br>no utilitarian function and their aesthetic role was not competitively
<br>significant. 20
<p>However, in the Qualitex decision, the Supreme Court did not address
<br>whether protection could be based solely on the colors being inherently
<br>distinctive if no secondary meaning was present. If the press pads
had been
<br>a unique combination of colors for this type of product, they could
have
<br>been recognized as a mark immediately. Much depended on the circumstances
<br>of the business and comparison to prior products in the market. The
Court's
<br>example of an orange jam jar with a word mark and orange colored label,
<br>illustrated the need for an analysis of color effect on the product
for
<br>trademark determination. 21 The Court pointed out that, at least initially,
<br>the jar's outside color would have no trademark significance. Instead,
the
<br>focus would be on the word mark. In this example, the Court did not
suggest
<br>that product color alone could not be an inherently distinctive mark,
or
<br>that color in other factual situations might not be inherently distinctive.
<br>Thus, the Supreme Court did not eliminate the possibility that color
could
<br>be inherently distinctive.
<p>B. Two Pesos, Inc. v. Taco Cabanna, Inc.
<p>The next significant Supreme Court opinion to address trademark product
<br>appearance features protection was Two Pesos, Inc. 22 The district
court
<br>found that the restaurant decor, a combination of internal and external
<br>building features, was inherently distinctive. 23 In affirming, the
<br>district court's decision, [*954] the Supreme Court established,
as a
<br>matter of law, that at least some product appearance features could
be
<br>inherently distinctive. 24 The Court rejected the rule that appearance
<br>feature marks require secondary meaning for protection. 25 Thus, Two
Pesos,
<br>Inc. appeared to suggest that all product appearance features would
be
<br>tested against the general principles of trademark law, i.e., there
would
<br>be no absolute protection bars for certain subject matter. That Court
was
<br>then left to decide the distinctiveness requirements for product appearance
<br>features.
<p>C. Wal-Mart Stores, Inc. v. Samara Brothers, Inc.
<p>In Wal-Mart, the Supreme Court's evolution of trademark protection for
<br>product appearance features continued when the Court finally addressed
the
<br>distinctiveness issue. 26 However, even though the Supreme Court addressed
<br>this issue, the debate on whether the doctrine of inherent distinctiveness
<br>should apply to product appearance still continues. 27 The Court limited
<br>its review to whether, as a matter of law, secondary meaning was required
<br>to protect trade dress. 28 Unfortunately, the case analysis and conclusions
<br>in Wal-Mart confuse both scholars and practitioners. 29
<p> [*955] In Wal-Mart, the Court was asked to resolve the question
of
<br>whether a dress design, with appliques in several unique places on
a dress,
<br>was inherently distinctive. 30 The appliques themselves were registered
<br>copyrights. However, the overall dress appearance was the product
<br>appearance feature on which trademark protection was sought. In reversing
<br>the lower court's finding of inherent distinctiveness, the Supreme
Court
<br>appeared to create new law that acknowledged that no "product design"
could
<br>be inherently distinctive. 31 Instead, secondary meaning was required
to
<br>protect the dress. The Court held that product packaging would be analyzed
<br>by the general principles applied to word marks and consequently could
be
<br>inherently distinctive.
<p>The Wal-Mart Court created a separate class of product features called
<br>"product design" that were denied market entry protection. The Wal-Mart
<br>Court found support for this new law in the dicta from Qualitex.
<br>Essentially, the Court found that color could never be inherently
<br>distinctive and required secondary meaning for trademark protection.
32 The
<br>Court's underlying principle was the notion that product appearance
<br>features were not recognized by customers as serving a trademark role.
33
<br>All product appearance features that are not packaging would be subject
to
<br>this rule. This decision created several new issues for [*956]
product
<br>appearance trademark protection, such as the definitional aspects of
<br>"packaging," "product design," and "product."
<p>The Wal-Mart Court gave several reasons for its decision. A major concern
<br>was the likelihood of protracted litigation over "product design" trademark
<br>protection. 34 The Court reasoned that lower courts lacked the capacity
to
<br>deal with the issue of inherent distinctiveness on summary judgments
in
<br>most cases, therefore ensuring that litigation would become burdensome
and
<br>protracted. As an alternative, the Court urged protection of product
design
<br>by other types of intellectual property, noting that in this case copyright
<br>law provided significant protection and that design patents might have
been
<br>obtained. 35
<p>While the Wal-Mart Court briefly discussed the application of the doctrine
<br>of functionality to remove uncertainty in what product designs might
be
<br>protected, it did not suggest that this analysis would resolve the
<br>litigation uncertainty over product design protection. 36 However,
less
<br>than two years after Wal-Mart, the Supreme Court addressed the
<br>functionality doctrine, the relation of trademark to utility patents,
and,
<br>by analogy, the use of design patents to provide necessary early
<br>protection.
<p> [*957]
<p>D. TrafFix Devices, Inc. v. Marketing Displays, Inc.
<p>In TrafFix, 37 the final Supreme Court case in the recent product
<br>appearance features group, the Court determined whether an expired
utility
<br>patent precluded a mark on the same product appearance features covered
in
<br>the utility patent claims. Because the Wal-Mart holding left many questions
<br>unanswered, both practitioners and academics were uncertain about how
the
<br>Supreme Court would examine the issues in TrafFix. The Court could
have
<br>applied a bright line test, as it did in Wal-Mart, by holding that
there
<br>could be no mark, either during the patent term or after the utility
patent
<br>expired. This alternative would have simplified the determination of
<br>protectable subject matter and reduced frequent litigation on the patent
<br>conflict issue.
<p>Instead, the Court unanimously applied the functionality test, including
<br>the aesthetic functionality test, to avoid a conflict with utility
patent
<br>law. 38 The Court left open the question of whether the functionality
test
<br>is sufficient to clearly define the interface between utility patents
and
<br>trademarks. 39 The decision made clear that trademark law should not
<br>protect utility patent subject matter or non-patented primarily functional
<br>features. This holding has strong implications; one of which being
that the
<br>courts will now use the doctrine of functionality to maintain the proper
<br>relation between product feature trademark protection and patent law.
<p>TrafFix eliminated, to some extent, the test that permitted product
feature
<br>protection for alternative embodiments of a product. 40 This previous
<br>analysis was a common method of deciding whether a product appearance
<br>feature had a competitive impact and consequently could not be protected
as
<br>a mark. The prior alternative embodiments test resulted in a narrow
form of
<br> [*958] product appearance trademark protection for function
related
<br>product appearance features. This test protected essentially the same
<br>subject matter as utility patent protection, where there was no significant
<br>competitive benefit from the trademark protected alternative embodiment.
<br>There was significant value in this protection due to a trademark's
<br>perpetual term.
<p>Under the TrafFix rule, product appearance features related to significant
<br>functional operation will not be protected under trademark law. This
new
<br>test leaves room for protecting appearance variations that have no
<br>essential function. The aesthetic role of a feature will be considered,
and
<br>if competitive significance from the appearance features exists, there
will
<br>be no trademark protection.
<p>The new trademark test for product functionality will require a
<br>comprehensive study of how an industry uses the alleged trademark product
<br>appearance features. For example, the dresses at the center of controversy
<br>in Wal-Mart would be evaluated to determine the functionality of the
<br>alleged trademark appearance features. Under the new TrafFix test,
the
<br>Court would hold that the appliques are primarily functional as aesthetic
<br>features and hence would not grant trademark protection.
<p>In the TrafFix opinion, the Supreme Court hinted that perhaps Wal-Mart
was
<br>too strong in its bar of inherent distinctiveness for product appearance
<br>features. The TrafFix case suggested that there was ample basis for
<br>interpreting Wal-Mart narrowly or even limiting it to its facts.
<p>III. Wal-Mart Viewed From the Industrial Design Professional and Consumer
<br>Perspectives
<p>In the practice of industrial design, professionals make products easier
to
<br>use and more attractive. A good example of the importance of the industrial
<br>designers' role is the recently developed I-MAC computer desktop series.
<br>The computer CPU and monitor are one unit, equating to one product.
It is
<br>immediately indicative of the company making the product, even with
several
<br>models available. The computer cabinets are not packaging, or are they?
<br>From the perspective of an industrial designer, features are added
to give
<br>products a unique appearance and make them attractive. For example,
<br>restaurants such as Pizza Hut have unique roofs that serve both as
an
<br>immediately recognizable trademark and as an attractive building feature.
<br>Label producing machines, such as Casio and Brother, have different
and
<br>unique appearances both in form and in their respective packaging.
It is
<br>these distinctive appearances that enable consumers to recognize a
given
<br>product. Are these machines, found in plastic cases with instructions
and
<br>advertising, a package or a product?
<p> [*959] Package design has its own art and sometimes the
product
<br>appearance plays an important role in the package design. For example,
a
<br>picture of the product inside may be shown on the package, or the product
<br>may be visible through a transparent window. Thus, the reality of packaging
<br>creates questions about just how Wal-Mart applies to the real world
of the
<br>industrial designer. 41
<p>IV. A Proposed Lower Court Interpretation of The Wal-Mart Decision
<p>There is ample basis for interpreting Wal-Mart narrowly and even limiting
<br>it to its facts. Specifically, the Wal-Mart 42 opinion misconstrues
dicta
<br>found in Qualitex, 43 and fails to fully consider the role of the
<br>functionality doctrine that the Supreme Court later clarified in TrafFix.
<br>44 Lower courts possess a great deal of flexibility when interpreting
the
<br>Wal-Mart decision, and should recognize that Wal-Mart introduced several
<br>new terms and issues. Instead of following the Court's dicta, i.e.,
the
<br>general package and product test, lower courts should apply the essence
of
<br>Wal-Mart and focus on what customers expect from the particular features
<br>and specific products involved. Essentially, courts should focus their
<br>analysis on whether the features are serving as a trademark or whether
they
<br>are merely utilitarian or aesthetic features. This approach recognizes
that
<br>some product appearance features can be inherently distinctive - a
<br>conclusion derived from dicta in the TrafFix decision.
<p>In Wal-Mart, the Court denied trademark protection without secondary
<br>meaning under a test that asked whether customers would generally expect
<br>that this type of product appearance had trademark significance. In
<br>discussing the issue, the Court used the example of a penguin shaped
<br>cocktail shaker as merely aesthetic and not protectable under trademark
<br>law. 45 Apparently, the cocktail shaker users would view the shaker
as
<br>primarily aesthetic, simply a conversation piece for partygoers. On
the
<br>other hand, product appearance features exist that consumers could
use to
<br>help in the identification of a product source.
<p>I-MAC computer and Compaq desktop computers are [*960] examples
of
<br>products that probably have inherently distinctive appearances. Customers
<br>have learned to expect this type of product to have significant trademark
<br>appearances. When an individual enters a large computer store looking
for
<br>an Apple brand computer product, the appearance of the I-Mac directs
the
<br>customer to the respective product brand. As discussed earlier, label
<br>producing machines are another example of brand focused appearance
<br>products. Customers shop visually, initially looking for the product
<br>appearance to find their preferred product brand. However, while these
<br>products might be attractive, a customer will not buy a product, such
as an
<br>Apple computer, solely based on appearance. Hence, there is no significant
<br>competitive advantage in protecting the appearance of a computer as
a
<br>trademark. Industrial designers have created a distinctive and attractive
<br>product. 46
<p>These examples demonstrate that the Wal-Mart criteria, which requires
<br>secondary meaning for product appearance protection, is in reality
more
<br>limiting than a literal interpretation might indicate. The proper analysis
<br>is to evaluate customer expectations in light of whether the product
<br>appearance features generally serve as a mark for that type of product.
<br>This view is consistent with the Wal-Mart holding and leaves the general
<br>doctrine of "inherently distinctive" on a firm foundation.
<p>The Supreme Court's dicta in the TrafFix decision supports this narrower
<br>interpretation of Wal-Mart. Specifically, the Court stated:
<p>In a case where a manufacturer seeks to protect arbitrary, incidental,
or
<br>ornamental aspects of features of a product found in patent claims,
such as
<br>arbitrary curves in the legs or an ornamental pattern painted on the
<br>springs, a different result might obtain. 47
<p>While merely dicta, the statement suggests that design patent features
that
<br>have some ornamental aspects, 48 may fall outside the TrafFix case's
<br>"merely functional" exclusion. It also opens the door for the possibility
<br>that some product appearance features could be inherently distinctive.
<p>Furthermore, the proposed interpretation of the Wal-Mart decision would
<br>provide important market entry rights for products that need immediate
<br>protection. It would also preserve the conceptual framework of trademark
<br>law, which is focused on the facts of each situation. In addition,
as will
<br>be discussed in the [*961] foreign law section of this
Article, this
<br>interpretation would provide a proper fit with generally accepted
<br>international practice by facilitating harmonization of product appearance
<br>trademark protection.
<p>The uncertainty resulting from the Wal-Mart decision has generated
<br>significant concern, 49 with a movement urging clarification of the
Lanham
<br>Act. A proposed legislative revision is presented in the next section.
<p>V. Legislative Proposal to Clarify the Effect of the Wal-Mart Decision
<p>In addition to the narrow interpretation of the Wal-Mart decision, this
<br>Article recommends a supportive legislative clarification of the Lanham
<br>Act. 50 One part of the proposed legislation would confirm that the
<br>trademark owner has the burden to show that a mark is distinctive,
either
<br>inherently or through secondary meaning. While the owner's burden currently
<br>exists, a statutory change would clarify this point. This proposal
follows
<br>a recent change in the Lanham Act concerning functionality, which placed
<br>the burden to establish that an alleged trade dress is not (merely)
<br>functional on the trademark owner. 51 The proposed legislative change
and
<br>the narrow interpretation of the Wal-Mart case would help courts handle
<br>product appearance trademark cases more efficiently. Further, many
cases
<br>could be decided on summary judgments, or otherwise settled more rapidly.
<br>The second aspect of the proposed legislation would clarify that product
<br>appearance may be inherently distinctive if the general requirements
for
<br>inherent distinctiveness are met.
<p>A wide spectrum of interest groups would support this [*962]
legislative
<br>proposal, especially after considering the serious nature of product
<br>piracy. For example, sometimes the appearance of a product is copied
to
<br>gain the benefit of the originating company's product introduction.
<br>Protection timing is critical because much of the economic benefit
is lost
<br>if the copier cannot be stopped immediately. In other words, the potential
<br>value of a mark would be weakened if users of similar product appearances
<br>were allowed to continue. Use of a different word mark by the copier
would
<br>not resolve the confusion since consumers would simply assume, given
the
<br>similarity in product appearance, that the original company is using
a
<br>different word mark.
<p>While there are other forms of intellectual property protection now
<br>applicable to product appearance features, the role of trademark law
in
<br>this area is unique. Trademark law can develop a sensitive framework
with
<br>which to identify whether a product has trademark significance upon
<br>entering the market, through the inherent distinctiveness principle.
The
<br>safeguards that are now in place due to the aforementioned recent group
of
<br>Supreme Court decisions, along with an appropriate narrow interpretation
of
<br>the Wal-Mart decision, offer a necessary means to prevent trademark
piracy.
<p>VI. Renewed Emphasis on Functionality Analysis
<p>The Supreme Court in TrafFix sharpened the focus on the role of the
<br>functionality doctrine in trademark law. 52 Before TrafFix, there was
a
<br>serious division in the literature and case law on how to apply this
<br>standard. 53 A product appearance that has [*963] primarily
a utilitarian
<br>or aesthetic role will no longer be given trademark protection, and
the
<br>fact that competitively effective alternative embodiments might exist
is
<br>not enough to support trademark protection.
<p>The new focus on the merely functional doctrine is supported by the
Court's
<br>statement in TrafFix that "as explained in Qualitex ... and Inwood,
... a
<br>feature is also functional when it is essential to the use or purpose
of
<br>the device or when it affects the cost or quality of the device." 54
This
<br>statement signals that if a product appearance feature has a competitively
<br>important function, it cannot be protected under trademark law. Further,
<br>the Supreme Court's reference to Inwood Lab., Inc. v. Ives Lab., Inc.
is a
<br>reminder to the lower courts that trademark law cannot protect a merely
<br>functional product appearance. 55 The existence of alternative embodiments
<br>with competitively equal utilitarian functions will not be a basis
for
<br>proving there should be trademark protection. This new test refocuses
the
<br>functionality doctrine, broadens it, and properly adjusts the balance
<br>between utility [*964] patent law and trademark product
appearance
<br>protection.
<p>The TrafFix Court also emphasized another aspect of functionality, the
<br>marketing impact of product appearance. The TrafFix decision explained
that
<br>aesthetic functionality was a separate part of the functionality test.
<br>Specifically, the Court stated that "in Qualitex, by contrast, aesthetical
<br>functionality was the central question, there having been no indication
<br>that the green-gold color of the laundry press pad had any bearing
on the
<br>use or purpose of the product or its cost or quality." 56 The Qualitex
<br>opinion expanded on this point, stating in essence that color did not
play
<br>a significant role in the product's purpose or use. 57 The colors did
make
<br>the press pads attractive and covered up stains, but these roles were
not
<br>significant enough for that product to deny color trademark protection.
It
<br>is apparent that each case should be decided on a case-by-case factual
<br>analysis basis.
<p>A great deal of controversy exists regarding the use of an aesthetic
<br>functionality test. 58 The main criticism centers on the notion that
the
<br>test is too vague. In view of the TrafFix and Wal-Mart cases, there
is
<br>little doubt that aesthetic functionality will be used more extensively
to
<br>limit product appearance protection. The TrafFix opinion refocused
the
<br>lower courts on the limits of trademark product appearance protection.
<p>VII. Boosting Product Appearance Features Trademark Rights by Obtaining
a
<br>Design Patent
<p>The Supreme Court in Wal-Mart suggested that a design patent could be
an
<br>alternative to trademark protection. 59 While design patents are not
the
<br>answer for market entry protection, they may be used to boost the
<br>effectiveness of product appearance features as trademarks for those
marks
<br>that require secondary [*965] meaning. This step can be
taken only if the
<br>presence of a design patent does not preclude trademark protection,
both
<br>upon issuance of the design patent and later when the design patent
<br>expires. Notwithstanding the TrafFix decision, this subject continues
to
<br>generate much debate. 60
<p>The Supreme Court's refusal to establish a blanket rule denying trademark
<br>protection for a utility patent protected product appearance suggests
that
<br>the Court will not rush into the question of design patent protection's
<br>overlap with trademark protection. The Court has applied trademark
<br>principles that keep the notion of trademark focused on what it should
<br>protect.
<p>The fundamental principle that design patents and trademarks do not
involve
<br>primarily functional features makes the trademark and design patent
systems
<br>compatible, albeit with different objectives and principles. Product
<br>features that are merely ornamental, a design patent requirement, 61
are
<br>not trademarks. This indicates that the systems do not conflict, because
a
<br>trademark requires source identification. These fundamental differences
<br>between trademarks and design patents suggest that a conflict would
not
<br>exist if there were a design patent on a product design that was also
a
<br>trademark, or was acquiring secondary meaning en route to trademark
status.
<p>The use of design patents to boost trademark status for product appearance
<br>features should be a useful step for product appearance features that
are
<br>not inherently distinctive. Nevertheless, the acquisition of trademark
<br>distinctiveness is not guaranteed. The design patent would provide
some
<br>degree of protection against piracy, within the limitations imposed
by the
<br>delays and restrictions of the design patent system. 62
<p>The next section of this Article discusses foreign and international
<br>protection of product appearance features. These international developments
<br>should influence the legislative decisions that pertain to the United
<br>States' protection of product appearance features.
<p>VIII. Foreign Product Appearance Features Trademark Protection
<p>Globally, the concurrent use of trademarks and design patents (or their
<br>equivalent registration form) is widely accepted. While national law
binds
<br>American courts, many national intellectual property laws are controlled,
<br>or at least influenced, by [*966] international agreements.
Congress and
<br>the appropriate governmental offices participate in meetings on proposed
<br>treaties and bi-lateral agreements, and continuously review foreign
laws to
<br>determine if they provide effective protection for American interests
<br>abroad.
<p>Many events have significantly influenced the international development
of
<br>trademark product appearance protection. The most notable are recent
events
<br>such as the General Agreement on Tariffs and Trade (GATT-TRIPS), 63
and the
<br>Community Trademark (CMTM). 64 In the next section of this Article,
the
<br>international agreements, as well as several foreign laws that were
the
<br>product of significant trend-setting changes, are reviewed.
<p>A. International Perspective on Product Appearance Protection - GATT-TRIPS
<p>Internationally, TRIPS is one of the current driving forces with respect
to
<br>product appearance trademark registration protection 65 because it
includes
<br>a requirement for a broad scope of trademark protection. While TRIPS
does
<br>not specifically refer to trademark registration law product appearance,
<br>the expressed language encompasses product appearance. 66 Particularly,
<br>member countries have interpreted TRIPS to include product appearance
<br>protection. Article 15(1) of TRIPS does not address the issue of what
<br>constitutes inherent distinctiveness or secondary meaning, but it does
<br>grant members the freedom to decide if secondary meaning is a requirement
<br>for product shape trademark [*967] registration protection.
67
<p>B. International Perspective of Product Appearance Protection - Community
<br>Trademark (CMTM).
<p>The European Union Community Trademark (CMTM) Directive and its related
<br>CMTM Trademark Regulations are also major influences on international
<br>product appearance trademark registration protection. In general, the
<br>European Union (EU) Directive requires members to change their national
<br>laws to conform to the Directive. Essentially, the CMTM Directive requires
<br>protection by trademark registration of product appearance. 68 The
United
<br>Kingdom experienced the impact of this Directive, because, up to that
time,
<br>it had not permitted trademark registration of product shape. 69
<p>The exclusion from CMTM, which related to product appearance protection,
<br>included several important provisions. One of these exclusions was
the
<br>product shape necessary for a technical result, which takes form in
United
<br>States law as the purely functional design feature exclusion. 70
<p>A few years after the Directive, the EU enacted the CMTM Regulation,
which
<br>established a trademark registration system. 71 [*968]
The scope of
<br>subject matter and exclusions were the same as those set up nationally
by
<br>the Directive. Using a complex set of laws that retained priority for
prior
<br>national rights, the registration system provided trademark and service
<br>mark rights throughout the community. Analyzing a few of the EU trademark
<br>registration office decisions on product shape marks, it appeared that
the
<br>Board of Appeals was applying a high distinctiveness standard. 72 This
<br>practice transformed the registration issue to a question of whether
the
<br>product appearance had created distinctiveness, i.e., secondary meaning.
<br>This approach applied the distinctiveness standard to effectively minimize
<br>product appearance registration without secondary meaning. The CMTM
system
<br>used an evenhanded approach to trademark registration, retaining
<br>consideration of inherent distinctiveness.
<p>A CMTM registration cannot be obtained if it is the same as a nationally
<br>protected copyright or industrial design right for the same design
that is
<br>owned by a third party. 73 This feature allows members to use their
<br>national laws to settle disputes as to who has the right to protect
a
<br>design, when a coexisting right exists. The EU is in the process of
<br>developing a harmonized approach to product appearance trademark
<br>registration protection.
<p>IX. International View of Product Shape Protection - Selected National
<br>Trademark Registration and Industrial Design Registration Laws on Product
<br>Appearance Protection
<p>Fortunately, the International Association for the Protection of
<br>Intellectual Property (AIPPI) recently surveyed thirty-one countries
on the
<br>relationship between trademark registration laws and industrial design
<br>registration laws in an effort to determine their interfaces. The final
<br>report contains a wealth of information, and an analysis of this material
<br>developed the following points:
<br>
<p>1. Product appearance is protected in all of these countries by trademark
<br>law, applying the basic trademark law principle of [*969]
<br>distinctiveness;
<br>
<br>
<p>2. Secondary meaning is not necessary in almost all of these countries
to
<br>protect product appearance. Most countries use a case-by-case analysis
to
<br>determine if a product shape is distinctive, and if it is not distinctive,
<br>then secondary meaning may be sufficient to permit registration.
<br>
<br>
<p>3. Most countries permit protection of product shape by trademark
<br>registration at the same time a product shape is protected by industrial
<br>design registration. The trademark protection continues after expiration
of
<br>the industrial design registration. The reasoning behind this approach,
<br>generally, was that the regular exclusions from trademark protection,
such
<br>as a technical result, the appearance as the natural form of a product,
or
<br>additions in value, adequately eliminated any major policy conflicts
with
<br>extending design protection by trademark registration. Also, as mentioned
<br>earlier, some countries applied a high level of distinctiveness,
<br>essentially requiring secondary meaning for many product shapes to
minimize
<br>unwanted policy issues. There were some countries, particular the French
<br>Group, that expressed concern about extended protection from trademark
<br>registration after an industrial design registration expired. All reports
<br>indicated that a strong policy argument existed to maintain product
shape
<br>trademark registration protection, for appropriate subject matter,
to
<br>prevent customer confusion.
<br>
<br>
<p>4. The reports revealed general agreement on the concurrent protection
by
<br>trademark registration and industrial design registration, and the
<br>continued trademark registration protection after expiration of the
<br>industrial design registration, within the context of each system.
There
<br>was recognition that the extent of subject matter protected for each
system
<br>might be different, and the basis for infringement determination might
<br>differ, producing unique overlapping protection for each IP form and
for
<br>each product.
<br>
<br>
<p>5. While there was considerable agreement on the basic trademark principles
<br>and how to apply them, there was expressed a general need for more
<br>harmonization on legal and procedural aspects, including what should
be
<br>excluded from protection. This discussion should be convened soon.
74
<br>
<p>CONCLUSION
<p>The basic trademark law principles that are applied to word marks work
<br>effectively for product appearance features with the proper application
of
<br>the functionality test. Utility patent law and [*970] trademark
law have
<br>different criteria, and as long as that separation is carefully maintained,
<br>there should be no need to have an absolute bar for inherently distinctive
<br>product appearance features. Each case should be reviewed separately
on a
<br>factual basis.
<p>The principle of inherent distinctiveness is a fundamental aspect of
<br>trademark law. Specifically, inherent distinctiveness provides word
marks
<br>and product appearance feature marks with important protection against
<br>copying at the time of market introduction. Product appearance features
can
<br>serve as marks immediately upon market entry. This deduction is self
<br>evident from the success of industrial designers in creating distinctive
<br>products.
<p>In Qualitex, the Supreme Court did not hold as a matter of law that
color
<br>could never be inherently distinctive, and in Wal-Mart the Court
<br>incorrectly relied on Qualitex to support the principle that "product
<br>design" (product appearance features) is not protectable under the
<br>inherently distinctive principle. Lower courts are urged to interpret
<br>Wal-Mart narrowly and instead focus on the basic principle stated in
<br>Wal-Mart: the importance of the customer's likely expectation on the
role
<br>of product appearance. If customers would expect that an appearance
might
<br>serve as a mark for that type of product, then there should be inherent
<br>distinctiveness. Again, this is a factual analysis, and each case should
be
<br>considered on its own merits.
<p>Congress is urged to enact legislation that will clarify that the Lanham
<br>Act does not bar product appearance features from being inherently
<br>distinctive. In addition, this clarifying legislation should affirm
that
<br>the mark owner bears the burden to prove a product appearance feature
is
<br>inherently distinctive.
<p>Globally, trademark law is becoming more uniform. Countries other than
the
<br>United States have overwhelmingly adopted the case-by-case analysis,
with
<br>the same principles applied for word marks and product appearance.
The
<br>merely functional test is also used to deny protection. The goal of
<br>harmonization would not be reached if the United States adopted a bar
to
<br>inherent distinctiveness in product appearance.
<p>The use of design patents to boost trademark rights, by maintaining
<br>exclusive rights for some product appearance features, is a sound approach
<br>based on existing American law and is used in most foreign countries.
The
<br>unique requirements for a mark will justify its existence during design
<br>patent protection and after patent expiration. As the Supreme Court
stated
<br>in Qualitex and suggested in Wal-Mart and TrafFix, aesthetic functionality
<br>will play a special role to keep product appearance feature marks on
the
<br>right course. Where there is no role other than aesthetics or
<br>ornamentation, an expired design patent's features are [*971]
available
<br>for all to use. Only if customers have found trademark significance
will
<br>there be a trademark that continues after design patent expiration.
These
<br>principles will balance competition and fair business dealing.
<p>The interpretation of the recent Supreme Court decisions coupled with
the
<br>current legislation will trigger a reduction in the subject matter
scope
<br>for trademark product appearance protection. Fewer product appearances
will
<br>be protectable under trademark law. The protection door has closed
<br>significantly. Sharper focus and narrower scope of subject protection
for
<br>trademark product appearance is a strong incentive to follow the lead
of
<br>other countries and develop a new market entry design protection law.
There
<br>is significant support for this type of legislation in the United States,
<br>as evidenced by the recently enacted market entry protection of vessel
<br>hulls and the history of similar legislative efforts. 75
<p>FOOTNOTES:
<br>n1 See, e.g., Wal-Mart Stores, Inc. v. Samara Brothers, Inc.,
529 U.S. 205, 209-215 (2000)
<br>(addressing the trade dress protection of product design in infringement
<br>actions under the Lanham Act). In the Wal-Mart decision, the Court
used the
<br>term "product design" to separate product packaging analysis from how
<br>product appearance would be treated under trademark law. Wal-Mart Stores,
<br>Inc., 529 U.S. at 211-213. The term "product design" may be used as
a
<br>general term that refers to how a product is constructed internally
and
<br>externally, including functional and aesthetic features. Id. at 213.
In
<br>this Article the phrase "product appearance features" is used to define
<br>what a customer sees on a product that may or may not be a mark. Because
<br>the phrase "product design" has several possible meanings, this Article
<br>uses the phrase "product appearance features" to describe what the
customer
<br>sees on the product, including its shape and surface features. The
term
<br>"package" is used to describe that which contains a product. A customer
<br>must unwrap or open a package to reach the product. For example, cereal,
<br>soft drinks, and dolls all come in packages. Sometimes a product can
show
<br>through a transparent package, and thus, the product becomes a part
of the
<br>package appearance. The term "trademark" is used in this Article to
include
<br>all forms of marks, including product appearance feature marks. For
a
<br>description of Industrial Design see the Industrial Designers Society
of
<br>America, ID Defined: Comprehensive Description of Industrial Design,
at
<br>http://www.ids.org/whatis/definition.htm (last visited Aug. 29, 2001).
<p>n2. For a discussion of
<br>the general background of basic trademark law see generally Charles
R.
<br>MacManis, Intellectual Property and Unfair Competition in a Nutshell
(West
<br>Group 4th ed. 2001); J. Thomas McCarthy, McCarthy on Trademark and
Unfair
<br>Competition (4th ed. 2001); Jerome Gilson et al, Trademark Protection
and
<br>Practice (2001).
<p>n3. 15 U.S.C. 1051-1127
<br>(2001).
<p>n4. U.S. Trademark Reg.
<br>No. 0117107 (registered June 19, 1917).
<p>n5. See 42 U.S.C. 1052(e)
<br>(2001) (denying trademark protection for merely descriptive terms).
<p>n6. North Am. Aircoach
<br>Sys., Inc. v. North Am. Aviation, Inc., 231 F.2d 205, 209 (1955). In
this
<br>famous case regarding the phrase "North American" as a mark for airplanes,
<br>the fact that the manufacturer was in the United States did not prevent
the
<br>primary significance of the geographic phrase from acquiring secondary
<br>meaning and functioning as a mark. Id. at 210. The secondary meaning
for
<br>"North American" derived from the extensive publicity of the fighter
planes
<br>during World War II. Id. There are several U.S. trademark registrations
for
<br>"North American." For example, "North American" is a registered trademark
<br>for, among other things, compressed air-oil, torch and blower controls.
<br>U.S. Trademark Reg. No. 1292737 (registered Sept. 4, 1984).
<p>n7. See King-Seeley
<br>Thermos Co. v. Aladdin Indus., Inc., 321 F.2d 577 (2nd Cir. 1963) (denying
<br>trademark protection for generic terms).
<p>n8. See, e.g., Estee
<br>Lauder Inc. v. The Gap, Inc., 108 F.3d 1503, 1509-10 (2d Cir. 1997)
<br>(discussing trade mark protection in the event of a likelihood of
<br>confusion).
<p>n9. See In Re Pennsylvania
<br>Fashion Factory, Inc., 588 F.2d 1343, 1345 (C.C.P.A. 1978) (holding
that
<br>the alleged mark was not sufficiently associated with the clothes for
which
<br>mark protection was sought because it was only on the store bag).
<br>Essentially, the alleged mark was not located in a manner that would
create
<br>trademark identification for customers. Id.
<p>n10. See Syndicate Sales,
<br>Inc. v. Hampshire Paper Corp., 192 F.3d 633, 638 (7th Cir. 1999) (holding
<br>that a different packaging of nearly identical floral baskets effectively
<br>limited any alleged confusion and consequently precluded an alarm for
trade
<br>dress infringement
<p>n11. See In re Teledyne Indus., Inc., 696 F.2d 968 (Fed. Cir. 1982)
(holding that the showerhead
<br>appearance was de facto functional, and thus, not registrable).
<p>n12. See Forschner Group, Inc. v. Arrow Trading Co., Inc., 124 F.3d
402 (2d Cir. 1997) (holding that a Swiss army knife's red color was aesthetically
functional).
<p>n13. See 15 U.S.C. 1125(a)(3) (2001) (stating that a "person who asserts
trade dress
<br>protection has the burden of proving that the matter sought to be protected
<br>is not functional").
<p>n14. See Sunrise Jewelry Mfr. v. Fred, 175 F.3d 1322 (Fed. Cir. 1999)
(affirming the U.S. Patent and Trademark Office's dismissal of a petition
to cancel the registration of a
<br>"metallic nautical rope design" for clocks, watches, and jewelry made
of
<br>precious metal).
<p>n15. See infra notes 17 to 41 and accompanying text (discussing the
relevance and significance of
<br>recent Supreme Court decisions that have impacted trademark law).
<p>n16. See Qualitex Co. v. Jacobson Prods. Co., Inc., 514 U.S. 159, 160-61
(1995) (addressing
<br>trademark protection for color under the Lanham Act).
<p>n17. Qualitex, 514 U.S. at 173. The Court asserted that "color may sometimes
meet the basic legal requirements for use as a trademark.
<p>n18. Id. The Court noted that the language of the Lanham Act, which
"permits an ordinary word,
<br>normally used for nontrademark purposes (e.g., description), to act
as a
<br>trademark where it has gained "secondary meaning'," should logically
apply
<br>to color as well. Id. at 171-72.
<p>n19. Id. at 167. The Court recognized that courts have traditionally
addressed whether word marks require protection when secondary meaning
is acquired, finding that
<br>protection was warranted. Id. The Court applied the word mark analysis
to
<br>the question of color protection, and maintained that color should
be
<br>treated in the same manner. Id.
<p>n20. Id. at 166. The Court stated that the "green-gold color served
no other function," but recognized that it did have a role in making the
product attractive by covering up
<br>stains. Id. The primary significance of the color combination was source
<br>identification. Id.
<p>n21. Id. at 163. The Court asserted that "over time, customers may come
to treat a particular color on a product or it's packaging [] as signifying
a brand." Id.
<p>n22. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992).
<p>n23. Two Pesos, Inc., 505 U.S. at 766. The District Court's jury instructions
defined trade dress as the: total image of the business. Taco Cabanna's
trade dress may include the
<br>shape and general appearance of the exterior of the restaurant, the
<br>identifying sign, the interior kitchen floor plan, the decor, the menu,
the
<br>equipment used to serve food, the servers' uniforms and other features
<br>reflecting on the total image of the restaurant. Id. at 765 n.1.
<p>n24. Id. at 776.
<p>n25. Id. at 772. The Courtrecognized that section 2 of the Lanham Act
only required secondary meaning as a condition to registering descriptive
marks; and thus, some marks were
<br>registrable without establishing a secondary meaning. Id.
<p>n26. Wal-Mart Stores, Inc.v. Samara Brothers, Inc., 529 U.S. 205, 205
(2000)
<p>n27. See, e.g., McCarthy, supra note 2, 8.13 (preferring a multi-factor
test to determine inherent
<br>distinctiveness). See also Adam J. Cermak, Inherent Distinctiveness
in
<br>Product Configuration Trade Dress, 3 U. Balt. Intell. Prop. L.J. 79
(1994)
<br>(favoring a flexible approach with several factors proposed). In
<br>Reconceptualizing the Inherent Distinctiveness of Product Trade Dress,
the
<br>author, Graeme B. Dinwoodie, generally supported the multi-factor test,
<br>originally discussed in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd.,
568
<br>F.2d 1342 (C.C.P.A. 1977). 75 N.C. L. Rev. 471 (1997). Specifically,
<br>Dinwoodie opposed separate tests for packaging and product configuration
<br>marks. Professor Dinwoodie's article is an excellent review of the
major
<br>trade dress protection literature published prior to the Wal-Mart decision.
<br>See also Jay Dratler, Jr., Trademark Protection for Industrial Designs,
<br>1988 U. Ill. L. Rev. 887 (supporting limited trademark protection for
<br>industrial designs, but also addressing a concern with respect to the
<br>extent that the doctrine of aesthetic functionality should be applied);
<br>William F. Gaske, Comment, Trade Dress Protection: Inherent Distinctiveness
<br>as an Alternative to Secondary Meaning, 57 Fordham L. Rev. 1123, 1130
<br>(1989) (urging a requirement of secondary meaning for all trade dress
<br>protection).
<p>n28. Wal-Mart, 529 U.S. at207.
<p>n29. See, e.g., Jeffery M. Samuels & Linda B. Samuels, Trade Dress
Undressed: Wal-Mart v. Samara, 29AIPLA Q. J. 43 (2001) (asserting that
the Supreme Court's decision in
<br>Wal-Mart was troublesome in several respects). Specifically, the authors
<br>noted that: the Supreme Court's Wal-Mart decision was ill advised.
It will render legal
<br>protection for new designs more problematic and will create additional
<br>uncertainty in the law.[] The application of different tests to packaging
<br>and design cases is impractical and unwarranted. The Court's
<br>"anti-competitiveness" concerns could be effectively addressed through
<br>application of the functionality doctrine.
<p>Id. at 63. See also infra note 49 (discussing the American Bar
<br>Association's opposition to the Supreme Court's decision in Wal-Mart).
<p>n30. Wal-Mart, 529 U.S. at 207.
<p>n31. Id. at 212. In addressing this issue, the Court asserted that,
"the fact that product
<br>design almost invariably serves purposes other than source identification
<br>not only renders inherent distinctiveness problematic; it also renders
<br>application of an inherent-distinctiveness principle more harmful to
other
<br>consumer interests." Id.
<p>n32. Id. at 216. The Court stated its findings and held that "in an
action for infringement of
<br>unregistered trade dress under 43(a) of the Lanham Act, a product's
design
<br>is distinctive, and therefore protectible, only upon a showing of secondary
<br>meaning." Id.
<p>n33. Id. at 212. In
<br>defending the proposition that customers do not recognize product
<br>appearance features as serving a trademark purpose, the Court noted
that:
<br>in the case of product design, as in the case of color, we think consumer
<br>predisposition to equate the feature with the source does not exist.
<br>Consumers are aware of the reality that, almost invariably, even the
most
<br>unusual of product designs - such as a cocktail shaker shaped like
a
<br>penguin - is intended not to identify the source, but to render the
product
<br>itself more useful or more appealing.
<p>Id.
<p>n34. Id. at 213-214 (discussing the reality that competition would be
deterred by a successful
<br>suit, or the threat of a successful suit).
<p>n35. Id. at 214 (noting that the "availability of these other protections
[i.e., copyright and
<br>design patents] greatly reduces any harm to the producers that might
ensue
<br>from our conclusion that a product design cannot be protected under
43(a)
<br>without a showing of secondary meaning"). The copyright protection
at issue
<br>in Wal-Mart extended only to the appliques, not to the total dress
image.
<br>The courts and the Copyright Office have seriously limited copyright
law
<br>protection of product appearance, by exercising a narrow interpretation
of
<br>the statutory requirement for separability of the protected design
from
<br>functional product features. See 17 U.S.C. 101 (1) (2001) (defining
"useful
<br>article" and "pictorial, graphic and sculptural work"); 17 U.S.C. 113
<br>(2001) (discussing the scope of exclusive rights in pictorial, graphic,
and
<br>sculptural works); 17 U.S.C. 102(8) (2001) (providing that copyright
law
<br>does afford effective copyright protection for architectural works).
Design
<br>patents require novelty as well as the general patent requirements,
35
<br>U.S.C 1 et seq. (1998). Design patents provide very good protection
for
<br>product appearances if they satisfy novelty and prompt filing requirements.
<br>Unfortunately, design patents do not have retroactive rights. Only
upon
<br>issuance of the design patent can one file an action; a design patent
is
<br>issued approximately one to two years after the date of filing. This
delay
<br>in filing an infringement suit can be critical. See William T. Fryer,
III,
<br>Design Patent System for the Twenty-First Century, 24 AIPLA Q. J. 331,
<br>339-341 (1996) (illustrating statistics on design patent pendancy).
<p>n36. See Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205,
213 (2000) (noting that the capacity to bring a plausible suit depends,
"upon the clarity of the test
<br>for inherent distinctiveness, and where product design is concerned
we have
<br>little confidence that a reasonably clear test can be devised).
<p>n37. TrafFix Devices Inc. v. Marketing Displays Inc., 121 S.Ct. 1255
(2001).
<p>n38. TrafFix, 121 S.Ct. at 1261-1263. In discussing the functionality
test, the Court noted that "in
<br>general terms, a product feature is functional, and cannot serve as
a
<br>trademark, if it is essential to the use or purpose of the article
or if it
<br>affects the cost or quality of the article." Id. at 1261.
<p>n39. See id. at 1263(stating that, "[if], despite the rule that functional
features may not be
<br>the subject of trade dress protection, a case arises in which trade
dress
<br>becomes the practical equivalent of an expired utility patent, that
will be
<br>time enough to consider the matter").
<p>n40. See supra notes 11 to15 and accompanying text (discussing the implication
of product appearance protection). A Federal Circuit case illustrates the
product appearance
<br>protection for alternative embodiments of a product. In In re Teledyne,
the
<br>appellant attempted to maintain a trademark for the configuration of
a
<br>showerhead nozzle. 692 F.2d 968, 969 (Fed. Cir. 1982). The Federal
Circuit
<br>held that in the absence of evidence showing the existence of commercially
<br>feasible alternative showerhead configurations, which others could
utilize
<br>to successfully compete with appellant on the basis of utility, the
<br>appellant had failed to rebut the Patent and Trademark Offices' case
of de
<br>jure functionality. Id. at 971.
<p>n41. The Industrial Designers Society of American (IDSA) web site is
an informative industrial
<br>design source. IDSA, at http://www.idsa.com (last visited Aug. 29,
2001).
<p>n42. See supra text accompanying notes 26 to 36 (discussing the application
and analysis of the
<br>Supreme Court's decision in Wal-Mart).
<p>n43. See supra text accompanying notes 16 to 21 (discussing the application
and analysis of the
<br>Supreme Court's decision in Qualitex).
<p>n44. See supra textaccompanying notes 37 to 40 (discussing the application
and analysis of the
<br>Supreme Court's decision in TrafFix).
<p>n45. Wal-Mart, 529 U.S. at213.
<p>n46. See supra note 41 (discussing the role of the industrial designer
in the context of trademark
<br>law).
<p>n47. TrafFix Devices Inc.v. Marketing Displays Inc., 121 S.Ct. 1255,
1262 (2001).
<p>n48. Design patents musthave ornamental features in order to fall within
the scope of protectable
<br>subject matter. 35 U.S.C. 171 (2001).
<p>n49. See Samuels & Samuelssupra note 29 and accompanying text (discussing
the troublesome
<br>aspects andnegative implications of the Supreme Court's decision in
Wal-Mart). The American
<br>Bar Association Section of Intellectual Property Law also voiced
<br>its concerns about the Wal-Mart decision at its 2001 annual business
<br>meeting in Seattle, Washington. Action Taken on Resolution 412-1 at
the
<br>2001 Summer IPL Conference, Trade Dress Inherent Distinctiveness for
<br>Product Configuration Resolved, American Bar Association Section of
<br>Intellectual Property Law (June 27-July, 1 2001). Specifically, the
<br>proposed resolution stated that "the Section of Intellectual Property
Law
<br>favors in principle the revision of the Lanham Act, 15 U.S.C. 1051-1127,
to
<br>state that there can be inherent distinctiveness of a non-functional
<br>product configuration when the general requirements for inherent
<br>distinctiveness applied to all trade dress are met."
<p>n50. 15 U.S.C. 1051-1127.
<p>n51. See 15 U.S.C. 1125(a)(2001) ("the person who asserts trade dress
protection has the burden of proving that the matter sought to be protected
is not functional."). See
<br>also Theodore H. Davis, Jr., The Burden of Proof in Determinations
of Trade
<br>Dress, 88 Trademark Rpt. 325, 347-48 (1998) (supporting the proposed
<br>legislative change and providing the ground work for the passage of
the
<br>legislation).
<p>n52. See supra, textaccompanying notes 37 to 40 (discussing the application
and analysis of the
<br>Supreme Court's decision in TrafFix).
<p>n53. Perry J. Saidman inhis article, Kan TrafFix Kops Katch the Kararan
Kopy Kats? Or Beyond
<br>Functionality; Design Patents are the Key to Unlocking Trade Dress
Patent
<br>Conundrum, concluded that: simply stated, the doctrine of functionality
falls short in answering the
<br>question of whether granting trade dress rights in the subject matter
of an
<br>expired patent unduly extends the exclusive rights (i.e., the conundrum),
<br>for two reasons: one, the doctrine of functionality fails to distinguish
<br>between unexpired and expired utility patents; and two, it cannot be
<br>applied in any reasonable objective manner to design patents.
<p>Perry J. Saidman, Kan TrafFix Kops Katch the Kararan Kopy Kats? Or Beyond
<br>Functionality; Design Patents are the Key to Unlocking Trade Dress
Patent
<br>Conundrum, 82 J. Pat. & Trademark Off. Soc'y 839, 884 (2000). At
the
<br>present time the Court answered these objections by holding the doctrine
of
<br>functionality, when properly applied, did substantially resolve the
trade
<br>dress and utility patent conflict, so the issue of design patent interface
<br>did not require a change in the law. See Theodore H. Davis, Jr., Copying
in
<br>the Shadow of the Constitution: the Rational Limits of Trade Dress
<br>Protection, 86 Trademark Rep. 223 (1986) (finding a constitutional
basis
<br>for applying the test of merely functional to exclude features); see,
e.g.,
<br>Ronald J. Horta, Comment, Without Secondary Meaning: Do Product Design
<br>Trade Dress Protection Function as Infinite Patents, 27 Suffolk U.
L. Rev.
<br>113, 132-134 (1993) (theorizing that secondary meaning is necessary
for
<br>trade dress protection as it gives notice of possible rights and reduces
<br>conflicts with patents). This solution is consistent with the liberal
<br>interpretation of the Wal-Mart decision. See Jay Dratler, Jr., Trade
dress
<br>protection for product configurations: is there a conflict with patent
<br>policy?, 427 AIPLA Q.J. 427, 594-98 (applying a Kewanee type patent
policy
<br>analysis, concluding that trade dress and utility patents can coexist).
<br>Professor Dratler urged a continuation of the current law and suggested
<br>that a strict interpretation of the current standards would most likely
<br>create negative effects. Id. at 594-598. See also Todd R. Geremia,
Comment,
<br>Protecting the Right to Copy: Trade Dress Claims for Configurations
in
<br>Expired Utility Patents, 92 Nw. U. L. Rev. 779, 815-16 (1998) (recommending
<br>that trade dress rights end after a utility patent disclosing the trade
<br>dress expired, and concluding that the doctrine of functionality does
not
<br>adequately eliminate unwarranted protection); Willajeanne F. McLean,
<br>Opening Another Can of Worms: Protecting Product Configuration as Trade
<br>Dress, 66 U. Cin. L. Rev. 119, 146 (1997) (identifying several problems
in
<br>protecting product configurations using trademark law); Glynn S. Lunney,
<br>Jr., The Trade Dress Emperor's New Clothes: Why Trade Dress Does Not
Belong
<br>on the Principle Register, 51 Hastings L.J. 1131, 1195 (2000) (noting
that
<br>the Lanham Act did not specifically include trade dress, and the courts
<br>should follow the precedent set fourth in Wal-Mart, and limit undue
<br>expansion of trade dress protection); Grame B. Dinwoodie, The Death
of
<br>Ontology: a Teleological Approach to Trademark Law, 84 Iowa L. Rev.
611,
<br>728 (1999) (analyzing the functionality component of trade dress law
and
<br>concluding that the protection needed could be reduced significantly
by
<br>stricter requirements for word mark labeling of the copier's product).
<p>n54. TrafFix Devices Inc.v. Marketing Displays Inc., 121 S.Ct. 1255,
1261 (2001).
<p>n55. See Inwood Lab., Inc. v. Ives Lab., Inc., 456 U.S. 844, 853 (1982)
(holding that colored medicine pills were not protectable by trademark
law, because the customers
<br>identified the content and quality of the pills by these features).
<p>n56. TrafFix, 121 S.Ct. at 1262.
<p>n57. Qualitex, 514 U.S. at166. The Court emphasized that "the green-gold
color acts as a symbol," and "having developed secondary meaning (for customers
identified the
<br>green-gold color as Qualitex's), it identifies the press pads' source.
And,
<br>the green-gold color servers no other function." Id.
<p>n58. See McCarthy, supranote 2 at 7.79-7.82 (suggesting a merely ornamental
test, and expressingthe view, held by many, that the aesthetic functional
test is too vague and
<br>open-ended); Mitchell M. Wong, Comment, The Aesthetic Functionality
<br>Doctrine and the Law of Trade Dress Protection, 83 Cornell L. Rev.
1116,
<br>1165-67 (1998) (urging trademark protection where there is only trademark
<br>significance, and no aesthetical role for a product design); Spencer
<br>Davczy, Comment, Aesthetic Functionality in Trade Dress: Post Secondary
<br>Aesthetic Functionality Proposed, 105 Com. Law J. 309, 329-30 (2000)
<br>(supporting the Wal-Mart decision requirement for secondary meaning
and
<br>other steps using the aesthetic functionality principle to narrow
<br>protection of trade dress).
<p>n59. Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 214
(2000); see supra text
<br>accompanying note 35 (discussing the significance and function of design
<br>patents).
<p>n60. See supra textaccompanying notes 53-59 (discussing the relationship
between design
<br>patents and the functionality test).
<p>n61. 35 U.S.C. 171.
<p>n62. See Fryer, supra note35, at 339-41 (discussing design patent statistics
with respect to
<br>application pendency).
<p>n63. Agreement on Trade-Dress Related Aspects of Intellectual Property
Rights, Including
<br>Trade in Counterfeit Goods, Dec. 15, 1993, art. 15, 33 I.L.M. 81,
<br>[hereinafter "TRIPS"], available at
<br>http://www.wto.org/english/tratop<uscore>e/trips<uscore>e/trips<uscore>e.htm.
<p>n64. Commission Regulation 2868/95 of 13 December 1995 on Implementing
Council Regulation (EC) No 40/94 on the Community Trademark, 1995 O.J.
(L303/1), available at
<br>http://www.wipo.ini on the Library page in the Collection of Laws for
<br>Electronic Archive (CLEA).
<p>n65. See generally TRIPS, supra note 63, 33 I.L.M. 81.
<p>n66. In particular,article 15 of TRIPS states in part that:
<br>any sign, or any combination of signs, capable of distinguishing the
goods
<br>or services of one undertaking from those of other undertakings, shall
be
<br>capable of constituting a trademark. Such signs, in particularly words
<br>including personal names, letters, numerals, figurative elements and
<br>combinations of colours as well as any combination of such signs, shall
be
<br>eligible for registration as trademarks. Where signs are not inherently
<br>capable of distinguishing the relevant goods or services, Members may
make
<br>registrability depend on distinctiveness acquired through use. Members
may
<br>require, as a condition of registration, that signs be visually
<br>perceptible." TRIPS supra, note 63, art. 15, 33 I.L.M. at 89.
<p>n67. Id.
<p>n68. Council Directive 89/104 of 21 December 1988 To Approximate the
Laws of the Member States Relating to Trademarks, art. 2, 1989 O.J. (L
40/1), on the WIPO Library
<br>page in the Collection of Laws for Electronic Archive (CLEA)
<br>http://www.wipo.int (last visited Aug. 29, 2001).
<p>Specifically, article 2 of the Council Directive states that:
<br>[a] trademark may consist of any sign capable of being represented
<br>graphically, particularly words, including personal names, designs,
<br>letters, numerals, the shape of goods or of their packaging, provided
that
<br>such signs are capable of distinguishing the goods or services of one
<br>undertaking from those of other undertakings. Id.
<p>n69. International Association for the Protection of Intellectual Property
[hereinafter
<br>AIPPI], Executive Committee Meeting, Sorrento, Italy (April 8-15, 2000),
<br>Three-Dimensional Marks: The Border Line Between Trade Marks and Industrial
<br>Design, available at http://www.aippi.org (last visited Aug. 29, 2001).
<p>n70. Council Directive, supra note 68, art. 3, 1989 O.J. (L 40/1). Specifically,
article 3, Grounds
<br>for Refusal or Invalidity, lists several important exclusions that
are
<br>beyond the scope of this paper, however, it states in part that:
<br>The following shall not be registered or if registered shall be liable
to
<br>be declared invalid;
<br>(e) signs which consist exclusively of:
<br>the shape which results from the nature of the goods themselves, or
<br>the shape of goods which is necessary to obtain a technical result,
or
<br>the shape which gives substantial value to the goods... . Id.
<p>n71. Commission Regulation, supra note 64, 1995 O.J. (L303/1). See Ruth
E. Annand & Helen
<br>E. Norman, Blackstone's Guide to the Community Trade Mark 21-59 (1998)
<br>(providing a comprehensive review of the CMTM system, and an excellent
<br>in-depth review of the procedures and legal interpretations under the
CMTM
<br>Regulation).
<p>n72. See generally Office for Harmonization in the Internal Market (Trade
Marks and Designs),
<br>Decisions of the Boards of Appeal in 2000, at http://www.oami.eu.int
(last
<br>visited Sept. 23, 2000). Take note of the First Board of Appeal's decision
<br>on March 8, 2000, in Case R 512/1999-1, on an application filed by
Proctor
<br>& Gamble Company for a three-dimensional soap container shape with
color
<br>features, and the First Board of Appeal's decision on April 14, 2000,
in
<br>Case R 179/1999-1, on an application filed by Telephone Products, Inc.
for
<br>the shape of electrical connectors. Id. at 50, 86. The result in each
cases
<br>was the same. Id. The Board affirmed the examiner's decision, which
held
<br>that the product shapes were not distinctive. Id.
<p>n73. Annand & Norman, supra note 71, at 59; Commission Regulation,
supra note 64, art. 1, rule
<br>52(2) 1995 O.J. (L303/1).
<p>n74. See generally AIPPI, supra note 69, Executive Committee Meeting,
Sorrento, Italy (April 8-15, 2000), Summary Report, available at http://www.aippi.org.
<p>n75. See 17 U.S.C. 1301 et. seq. (2001) (Vessell Hull Design Protection
Act). See also William T .Fryer, III, The Evolution of Market Entry Industrial
Design Protection: An
<br>International Comparative Analysis, 21 Eur. Intell. Prop. Rev. 618
(1999)
<br>(discussing 17 U.S.C 1301 et. seq., and the international trend with
<br>respect to market entry product appearance protection).
<br>
<p>End of Document
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