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.


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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.

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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



2d Circuit: Sleepy’s v Sleep Number – Can You Be Defamed To Your Secret Agent?

Plaintiff Sleepy’s sold a line of mattresses manufactured by a competitor, Defendant Select Comfort. Sleepy’s line performed poorly in comparison to a ‘slightly different’ line sold by Select Comfort in its own stores (which line had ‘exactly the same’ technology and basic components as Sleepy’s line).  Select Comfort thought that Sleepy’s didn’t adequately advertise their line, while Sleepy’s suspected that Select Comfort was disparaging the line sold by Sleepy’s.

Sleepy’s sent ‘secret shoppers’ to Select Comfort stores, who asked sales staff about the differences between the two lines.  When the CEO of Sleepy’s was informed that the secret shoppers reported that Select Comfort’s sales staff was allegedly disparaging Sleepy’s, the CEO said:

This may be an enormous, fabulous lawsuit for Sleepy’s to collect damages . . . .This may be very good because if we start getting involved in a lawsuit especially in a class action and its gets publicity it will not be good for them.  This cannot help them at all in the industry.  It won’t mean a thing to the consumer, but it will for people who want to do business with [Select Comfort].


Question: If the allegedly slanderous remark is made to an agent of the plaintiff, was the slander published, or was it consented to by the plaintiff?

Second Circuit: a statement made to an agent of plaintiff can be deemed to have been published, but:

When a plaintiff sues for defamation based on a statement of the defendant elicited by the plaintiff with some reason to expect that the defendantʹs statement might be defamatory, the more the evidence supports the proposition that the plaintiff elicited the statement with a high degree of certainty that it would be defamatory, for the purpose of enabling a lawsuit, the stronger the defendantʹs case for deeming the statement consented to, thus barring the claim.

Here, it was established that Sleepy’s was both virtually certain that its inquiry would elicit allegedly slanderous statements and was substantially motivated by the desire to bolster a contemplated lawsuit.  Thus statements made after the CEO’s statement (above), were deemed to have been consented to (statements made prior to that statement were remanded to the district court for further review).


Question: What is the standard for expectionality under the Lanham Act, with regard to fee awards?

The Lanham Act allows a prevailing party to be awarded fees in exceptional cases.  The Second Circuit now decides that it will apply the Octane Fitness test when determining exceptionality  under the Lanham Act, namely that an ‘exceptional’ case is one that stands out from others with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated.  The question is to be considered by evaluating the totality of the circumstances, considering a wide variety of facts, including “frivolousness, motivation, objective unreasonableness (both in the factual and legal components of the case) and the need in particular circumstances to advance considerations of compensation and deterrence.”

In the event of a multi-claim suit under different statutes (as is the case here), the prevailing party will only be entitled to work expended in prosecuting or defending the Lanham Act claims.

While the issue of exceptionality will be determined upon remand, the Court noted:

It is not altogether clear to us that the case at bar was ʺfrivolous[]ʺ or improperly
ʺmotivat[ed].ʺ Octane Fitness, 572 U.S. at 554 n.6. Sleepyʹs claims survived summary
judgment and were only dismissed after a bench trial on a motion for judgment on
partial findings under Federal Rule of Civil Procedure 52(c). On appeal, we revived the
unfair competition, breach of contract, and slander per se claims. And although Ackerʹs
comments strike us as objectionable and inappropriate, it is not self‐evident that they
alone could convert an otherwise‐reasonable response to possible defamation
(investigation and litigation) into a bad‐faith competitive ploy. But the district court
must decide this in the first instance—in conjunction with other relevant factors, such as
Sleepyʹs spoliation—a decision to which we will owe deference in the event of a further


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.