5
Nov/18

Test of Fed Circ Decision in Converse v ITC


I spoke about this decision at the John Marshall Law Conference last week.  I think the bit about comparing defendant’s product to plaintiff’s mark, on page 24, seems like a mistake.  I think in a non-trade dress case the trier of facts compares the marks to each other, and considers the relatedness of the goods/services. I think on a trade case case, the trier of facts would compare the non-functional elements of defendant’s design or configuration, to the claimed trade dress (and would also consider the relatedness of the goods/services).

Also, the last sentence of the decision mentioning numerous commercial alternatives, is a reminder that there is a split among the circuits on whether this factor is relevant to the functionality analysis.

Some other bits will require further thought.

Read the dissent.

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