Trademark and Unfair Comp.

Boston College Law School

January 23, 2008

Trade Dress, Functionality

Trade Dress & Product DesignTrade Dress Product Design

Trade Dress Protection

• Lanham Act § 43(a)– Any person who shall affix, apply, … or use in

connection with any goods or services … a false designation of origin … , and shall cause such goods or services to enter into commerce … shall be liable to a civil action … .

Two Pesos v. Taco Cabana505 U.S. 763 (1992)

Taco Cabana Trade Dress

Two Pesos v. Taco Cabana505 U.S. 763 (1992)

• Findings of the District Court– Taco Cabana has an identifiable trade dress– The trade dress is non-functional– The trade dress is inherently distinctive– The trade dress has not acquired secondary

meaning

Inherently Distinctive?

Inherently Distinctive?

Policy Considerations

Distinctiveness

Generic Descriptive Inherently Distinctive

Low

HighPotential forConfusion

Harm toCompetition

Trade Dress,Trademarks

ProductDesign

Example - Review

Functionality

• Lanham Act § 2(e)(5)– No trademark … shall be refused registration

… unless it --• (e) Consists of a mark which, … (5) comprises any

matter that, as a whole, is functional

TrafFix v. MDI121 S. Ct. 1255 (2001)

Functionality

• When is something “functional”?– Essential to the use or purpose of the article, or– Affects the cost or quality of the product

• Overall policy consideration– Exclusive use of the feature would put

competitors at a significant non-reputation-related disadvantage

Eco v. Honeywell

Aesthetic Functionality

Au-Tomotive Gold v. VW

Hypos

Hypos

In re Gibson Guitar Corp.

Functionality - Summary

• When is something “functional”?– Essential to the use or purpose of the article– Affects the cost or quality of the product

• Factors to consider– Existence of utility patent– Statements in advertising– Existence of alternative designs– Cost of manufacturing

Hypothetical

Hypothetical

Patent, Copyright, Trademark

Patent Copyright

TrademarkFunctionality

Doctrine

Useful ArticleDoctrine

ProductDesign

FictionalCharacters

ComputerSoftware

Administrative Details

• Next Assignment– Read III.A & B

• Use in Commerce

• Priority and Concurrent Use