Today’s class will be focused on distinctiveness of nonverbal identifiers.
- Read 86-107 in your text
- Loretta Chao and Betsy McKay, Pepsi Steps Into Coke Realm: Red, China, Wall St. Journal, Sept. 12, 2007 at B4.
- TMEP Sect 1202.13
- TMEP Sect. 1202.15
And watch this:
This guy is like a combination of J. Thomas McCarthy and Santa Claus!
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September 2, 2008 at 2:33 pm |
Pepsi Steps Into Coke Realm- With regards to Pepsi’s change from their traditional blue can to their new red one featuring Chinese Olympic athletes this immediately brings to mind a cause of action for trade dress infringement. I am unsure if China recognizes this form of redress, but because Coke has such strong brand recognition I would imagine they have taken steps to protect the “overall look and feel” of their products’ packaging.
Lauren Herold
September 2, 2008 at 5:19 pm |
There is an argument that consumers may be confused, and may think that the new Pepsi can is actually a special can that Coke came out with for the Olympics.
The irony: In the face of litigation – Pepsi could argue Coke has such a superior mark that any absence of the Coke wave is enough of an indication that it is not a Coca-Cola product.
Jill Fedewa
September 3, 2008 at 11:42 am |
J.M. Hollister, LLC v. American Eagle Outfitters stated “that subject matter that is merely a decorative feature does not identify and distinguish the applicant’s goods and thus does not function as a trademark. A decorative feature may include words, designs, slogans, or other trade dress…matter that serves primarily as a source indicator, either inherently or as a result of acquired distinctiveness, and that is only identically ornamental or decorative, can be registered as a trademark”. Like the extremely well known and valuable NIKE Swoosh mark, the Burberry Equestrian Knight is federally trademarked as are the well known Louis Vuitton symbols known as the “monogram canvas marks”, which include four-pointed stars, four-pointed stars inset in curved diamonds, and four-pointed flowers inset in circles.
Angel Stull
September 3, 2008 at 12:18 pm |
I have a few interesting thoughts and concerns in regards to Star Indus., Inc. v. Bacardi & Co., Ltd. that I would like to share.
Just as a general comment, I just would like to point out that the “O” in the Georgi advertisement depicted on page 88 of the text is not clear enough to be read as “Georgi O” as is the “O” in “Bacardi O”, to me anyway.
Secondly, the text points out that “a design used in conjunction with other marks is separately protectable in its own right if it creates a separate and distinct impression from the impression created by the other marks”. The text goes on to say that “this will be true if either the mark is itself inherently distinctive, or the consuming public has come to associate the separate mark in itself with the particular product, vesting it with its own distinct secondary meaning. The text gives two examples, one of which is “In Re Servotronics, Inc. which held that stylized letter “S” separately protectable from the word in which it appeared”. I found this fact rather interesting and wanted to draw attention to how this still stands today. For example, in the fashion industry I point to examples such as the stylized letter “G” indicating the Gucci brand, as well as the stylized letters “L” and “V” indicating the Louis Vuitton brand. Fendi and Coach also share this protection in their use of the stylized letters “F” and “C”.
Angel Stull
September 3, 2008 at 12:31 pm |
The text cites a case that claims that there is no difference between trademarks and trade dress. Additionally, it states that the terms are often used interchangeably and their usage tends to reflect the historical classification of different source identifying subject matter rather than any different treatment under modern trademark law. Is this so? I was under the impression that trademark protection and trade dress protection were two different aspects. Has this concept changed over time or am I totally confused and wrong?
Angel Stull
September 3, 2008 at 4:21 pm |
I’ll take a shot at the trade dress question…
Generally, trade dress is defined as a product’s “total image” or “overall appearance” and “may include features such as size, shape, color or color combinations, texture, graphics or even certain sales techniques.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 112 S.Ct. 2753 (1992), citing John H. Harland Co. v. Clarke Checks, Inc., 771 F.2d 966, 980 (11th Cir. 1983).
Like a trademark, the trade dress of a product may be registered or unregistered and still receive protection; in fact, trademark and trade dress are both registered under the same statute, under either the principal or supplemental registers. See 15 U.S.C. §§ 1052 and 1091.
Trade dress differs from trademark in the context that the trade dress of a product may have generic or merely descriptive elements in it, “[w]here the plaintiff’s overall trade dress is distinctive, the fact that it uses descriptive (or generic) elements does not render it unprotectable.” Computer Care v. Service Systems Enterprises, Inc., 982 F.2d 1063 (7th Cir. 1992). What “defines” the trade dress of something is the total image, feel or overall appearance of a product (i.e. when characterizing a particular dress or seeking to protect it, all of the claimed features must be viewed as a whole). In American Greetings Corp. v. Dan-Dee Imports, Inc., the court held that, “[t]rade dress is a complex composite of features” and “[t]he law of unfair competition in respect to trade dress requires that all of the features be considered together, not separately.” American Greetings Corp., 807 F.2d 1136, 1141 (3rd Cir. 1986).
Most of what I learned about trade dress came from a SCOTUS case called, Two Pesos, Inc. v. Taco Cabana, Inc., it’s arguably what a majority of people would say is the seminal case on the subject of trade dress, and helped me to understand the concept tremendously (you can find it here; or here; or here).
I hope that this was of some help!
-Zac Papantoniou
September 3, 2008 at 9:05 pm |
RE: Lauren’s question about Chinese trademark law
Since China is a member of the World Trade Organization (WTO), there are certain minimum requirements that their laws must meet in order to remain in good standing. If their laws are deficient, then they face economic sanctions in the form of increased tariffs on the goods that they export to other member countries. Several of those “minimum requirements” are set out in the “Agreement on Trade-Related Aspects of Intellectual Property Rights,” more commonly referred to as TRIPs. Article 15 of the TRIPs agreement speaks specifically to the types of trademarks/tradedress that a member country must provide protection for. Articles 42 through 49 lay out the framework that must be provided for enforcement.
I think that you will find that, upon analyzing these requirements of membership to the WTO, that China must provide Coke with tradedress protection and allow them to bring a cause of action against Pepsi if Coke wishes to press the issue. More than likely, Coke chooses to ignore this “infringement” because of the cost involved with international litigation.
The more interesting question is whether Coke’s failure to enforce its trademark internationally should have any affect on the perceived distinctiveness of its mark in the United States. If Pepsi did the same thing on this side of the pond, Coke would have no choice but to sue them. In an increasingly global landscape, should Coke be forced to assert its rights everywhere?
Signed: Jason Fischer
3L, Barry University School of Law
September 3, 2008 at 10:05 pm |
With regard to the possible trade dress infringement in Pepsi Steps Into Coke Realm, during our discussion of anti-dissection we talked about the “relevant” marketplace. Does that apply only to the anti-dissection rule? I’m asking because I interpreted “relevant” marketplace as meaning the marketplace within which the alleged infringement occurred – which could be wrong. If that interpretation is correct, or somewhat correct, I’m wondering whether a trade dress infringement claim would work in the case of Pepsi using a red can in China when the article suggests that in that market companies are still trying to develop brand identity. If Coke’s red can does not have the same brand recognition in China as it does here would a trade dress infringement claim against Pepsi for copying the can only in that market exist?
Jamie Blucher
September 4, 2008 at 12:23 am |
The Qualitex case interested me because it dealt with simply color being a trademark. It interested me because my motorcycle happens to be from the company who uses what some refer to as the worst color green ever. As I understand it the specific, rather day-glo green they use is to help their bikes stand out on the track during races and as an avid motorcycle racing fan I can say that it does just that. I rather like Kawasaki green even if my bike isn’t in that color. I am not too sure about secondary meaning yet but if I understand it a little, I think it means that when someone sees that green, then they instantly know they are looking at a Kawasaki because no one else uses that color. I often wondered if it was simply the abrasiveness of the color that kept other companies from using it or was it actually protected. Well I looked on the USPTO site and I didn’t find a registration for Kawasaki green which I thought was weird. Maybe no one ever challenged them on it.
-Christopher Brown
September 4, 2008 at 1:10 am |
This may not be per se academic, but I found this little test somewhat interesting, though perhaps not conclusive.
http://www.fraudwasteabuse.com/2007/04/pepsi-vs-coke.html
It does not directly relate to the issue of trade dress or trademark infringement, but I thought if might be “Food” for thought to all you Cola “X” diehards.
Zach McCormick
September 4, 2008 at 9:40 am |
After today’s discussion on trade dress and distinctive colors, I figured that this would be fitting:
Back in March of this year, a cell phone service provider, Deutsche Telekom (better known as T-Mobile), sent a nasty little cease and desist letter to a cell-phone technology blog, known as Engadget Mobile.
See, Engadget Mobile uses the color “Magenta” in their logo and on the website’s background; DT believed that EM’s “Magenta” color was a little too similar to the “Magenta” DT has a German trademark for.
As Engadget put it,
Needless to say, DT’s attempt to score uber pwnage on EM, dissolved into a fervent backlash among other cell-phone tech blogs changing their colors to the same “Magenta” in an attempt at some sort of geeky solidarity.
DT, in my opinion, correctly believed that the use of the color scheme in EM’s logo could cause a likelihood of confusion among cell-phone consumers, being that EM also sold T-Mobile phones and service through their tech-blog. Keep in mind, the threat of legal action did serve it’s purpose , as Egadget Mobile changed their logo, see here, here and here.
- Zac Papantoniou
September 8, 2008 at 9:46 am |
RE: Taco Cabana
I was going back over the cases from last week, making entries in my outline, when I realized something troubling. All three opinions in Two Pesos v. Taco Cabana explicitly recognized that “the principles that qualify a mark for registration under § 2 of the Lanham Act apply as well to determining whether an unregistered mark is entitled to protection under § 43(a).” (thank you Justice Thomas for stating that so succinctly). However, all three United States Supreme Court Justices forgot to apply one of those core principles to the case at bar: use in interstate commerce is required. According to the facts, both restaurant chains were operating solely in Texas. Taco Cabana would not have been entitled to register their trade dress because they were not using it outside the state. Why are they able to bring their complaint into a federal court? Should the Lanham Act even apply at all? What about the holding in The Trademark Cases, 100 U.S. 82 (1879)?
Signed: Jason Fischer
3L, Barry University School of Law
September 18, 2008 at 8:10 pm |
In regard to NON-VERBAL IDENTIFIERS, BACARDI intoduced the following relevent information:
(1) Unshaded linear representations of common shapes or letters are referred to as “basic.” They are not protectable as inherently distinctive, because to protect them as trademarks would be to deprive competitors of fundamental communicative devices essential to the dissemination of information to consumers.
(2) Stylized letters or shapes, however, are not “basic,” and are protectable when original within the relevant market.
FL