SDNY: No Trade Dress In Advertising Lay-out (Laurel Road v Commonbond)

Plaintiff Laurel Road, a bank, ran an advertising campaign. A typical ad looked like this:

A competitor, Commonbond, ran ads, one of which looked like this:

Both banks ran outdoor display ads, sometimes in similar locales, such as the suburban rail-line, MTA North.

Plaintiff brought a trade dress claim, alleging a trade dress that consists of:

  1. a color palette with a dark background;
  2. a statement in large, light-colored, sans serif font at the top of the advertisement;
  3. a “hierarchical” typography with smaller, sans serif font under the large typeface sentences;
  4. center or left-side alignment; and
  5. a colored line under a sub-set of words in the large typeface sentences.

Plaintiff brought a motion for a preliminary injunction.

Held: All of plaintiff’s claimed elements, ‘defined at a high level of generality’, can be readily found in other advertisements. In fact, Defendant showed that it had used most if not all of the claimed elements, prior to plaintiff. “Because the Trade Dress is composed exclusively of commonly used elements, which have all been used in combination previously, the Trade Dress is likely generic . . .” Alternately, the alleged Trade Dress is functional, as it consists of features useful to advertising or educating consumers about the product.

Comment: The ‘look and feel’ of an advertising campaign is potentially protectable. Philip Morris successfully asserted rights in the Marlboro man ‘motif’ of a cowboy on a horse. Harlequin established rights in the layout of the covers of its romances. However, Haagen-Dazs was unsuccessful in preventing Frusen Glade from also pretending to be Scandanavian.


Recent @trademarkblog Retweets


Failure or Success At Functioning As A Trademark

Maybe I’m relying on anecdata but I think I’m seeing more “Failure-to-Function” fact patterns lately, both in my practice and in TTAB decisions. It could be because trademark lawyers encourage clients to protect everything, so in response, clients attempt to protect everything (including taglines, slogans, catch-phrases, etc.). The failure-to-function issue turns on whether, given the context in which consumers encounter the term, they perceive a term as a source indicator, or as ornamentation of or information about the goods/services. You can read the two recent TTAB decisions below, but sometimes it’s easier to just show than to explain. In this specimen, OOPS! WRONG ANSWER does not function as a trademark, but rather provides information about the service (a trivia quiz), so this application was denied:

In contrast, here, while SMILE MORE appears as ornamentation on the t-shirt itself, it also functions as a source indicator, identifying the store on the top of the screen.


Recent Tweets and Retweets from @trademarkblog


Lanham Act Section 43(a) Class Action (sic) re KONA Coffee

Kona is a coffee-growing region in Hawaii. The Department of Agriculture of Hawaii has a registered certification mark for the mark 100% KONA COFFEE and design. Many entities own registrations for coffee including the KONA element, most disclaiming the term, some slipped by without. Four growers of Kona coffee (from Kona) have now sued 17 named defendants, including the largest food purveyors in the U.S. (i.e. Amazon and Walmart), for selling coffee allegedly mislabeled as Kona coffee. Interestingly, this is styled as a class action, under Section 43(a) of the Lanham Act, alleging both false designation of origin and false advertising.

Section 43 is not a consumer-oriented provision. Plaintiffs must themselves engage in U.S. Commerce (but see Belmora). Paragraph 33 alleges that between 600 and 1000 entities are injured by defendants’ actions. These all allegedly sell Kona-grown coffee.

Here is an article on whether common law certification marks might be enforceable.

Background: A filing from a recent class action regarding Kona Coffee here and a new article on a prior dispute regarding the KONA name from the 90’s here


SDNY: CHEF CHLOE: Delay Bringing Prelim: Motion to Compel Arbitration

Plaintiff’s one year delay dooms prelim motion. Discussion of interpretation of arbitration clause.


WDNY: Prelim Denied: Mrs United States v. Williams

Beauty Pageant fails to show irreparable harm in motion for prelim against former licensee.


NHL v The Hockey Cup re Trade Dress in Stanley Cup

The National Hockey League owns registered rights in the configuration of the Stanley Cup. It sells replicas of the trophy filled with ice from Stanley Cup finals through its online store, Stanley Cup charms and the like. Defendant sells Stanley Cup-shaped drinking stein. NHL defeats motion to dismiss, alleging ownership of non-functional aspects of its trade dress,despite occasional use of Cup as drinking device.

No Url Found


Fed Cir: Laerdal Medical v ITC – ITC Should Address Sec.1337 Pleading Defects Pre-Proceeding

Plaintiff filed a complaint with ITC alleging, inter alia, trade dress infringement by respondent.  Respondent defaulted.  ITC declines to issue relief regarding trade dress, finding that that “Laerdal failed to plead sufficiently (1) that it suffered the requisite harm, (2) the specific elements that constitute its trade dresses, and (3) that its trade dresses were not functional.”  Laerdal appealed.

Fed Circuit:  The word ‘shall’ in Section 1337 obligates the ITC to grant relief if the proceeding was initiated and respondent defaulted.  The time to bring up pleading defects is prior to initiating a proceeding.

Justia Summary:

Laerdal, which manufactures and distributes medical devices, filed a complaint at the International Trade Commission asserting violations of 19 U.S.C. 1337 by infringement of Laerdal’s patents, trademarks, trade dress, and copyrights by importing, selling for importation, or selling within the U.S. certain medical devices. The Commission investigated Laerdal’s trade dress claims, one patent claim, two copyright claims, and one trademark claim, excluding all others. Despite being served with notice, no respondent responded. An ALJ issued the Order to Show Cause. Respondents did not respond. An ALJ issued an initial determination finding all respondents in default. Laerdal modified its requested relief to immediate entry of limited exclusion orders and cease and desist orders. The Commission requested briefing on remedies, the public interest, and bonding. The Commission’s final determination granted Laerdal limited exclusion orders against three respondents and a cease and desist order against one, based on patent and trademark claims; it issued no relief on trade dress and copyright claims, finding Laerdal’s allegations inadequate. As to trade dress claims, the Commission found that Laerdal failed to plead sufficiently that it suffered the requisite harm, the specific elements that constitute its trade dresses, and that its trade dresses were not functional; despite approving the ALJ’s initial determination of default and despite requesting supplemental briefing solely related remedy, the Commission issued no relief on those claims. The Federal Circuit vacated. The Commission violated 19 U.S.C. 1337(g)(1) by terminating the investigation and issuing no relief for its trade dress claims against defaulting respondents.




Off-White Sues Brooklyn Lighthouse for Counterfeiting