Excerpt From Adidas Verdict - Photo Of Non-infringing Model
This is an excerpt from the verdict (see below). A 'yes' check indicates that the jury found for Adidas.
May 07, 2008
Text of Adidas Payless Verdict - Photos Of Infinging Sneakers
There were approximately 290 different models of striped sneakers involved in the Adidas case. In a quick scan I only saw one model that the jury didnt' find to be infringing. This verdict clearly suggests that Adidas ' trademark rights extend to two stripes and four stripes with varying placement on the shoe.
January 13, 2008
43(B)log on Splenda Case and Private Labels
43(B)log discusses the recent SPLENDA case (McNeil Nutritionals, LLC v. Heartland Sweeteners, LLC, --- F.3d ----, 2007 WL 4478981 (3d Cir.) and its treatment of the use of house marks in mitigating confusion by 'lookalike' house brands.
November 16, 2007
DJ Action Over "Beetle"-shaped Toy Car
Alex Toys sells, among other things, toy cars. VW sent a demand letter alleging that some of its toy cars infringed its trade dress in the VW 'beetle" (VW sells (or licenses) beetle-shaped cars). VW filed a complaint but never served it. Negotiations ensued but didn't lead to resolution. Alex filed an action for a declaration of non-infringement.
Panline USA dba Alex Toys v. Volkswagen Aktiengesellcahft, 07 CIV 10272 (SDNY Nov 13 2007) (without exhibits).
September 26, 2007
Settlement in Seattle Furniture Trade Dress Dispute
Seattle Trademark Lawyer: "Bourne Ultimatum: Vancouver Importer Settles Trade Dress Case."
September 14, 2007
The Angels Want To Wear My Red Soles
FemaleFirst: Christian Louboutin Battles Over Red Soles:
"Christian Louboutin is battling to trademark the signature red soles on all his shoe designs.
The shoe legend is fed up of other companies cashing in on his popularity by putting red soles on their own shoes to imitate his famous designs."
August 21, 2007
Suicide Girls v God's Girls
Prof Tushnet wins this month Pun In Blog Post Award with Trade Undress, discussing a trade dress suit between erotic photography site Suicide Girl's and alleged competior God's Girls. File this under "trade dress in web pages."
July 30, 2007
Grinder v Grinder
McCormick, the spice company, has registration no 2,183,132, for a mark consisting of:
"the configuration of a round bottle that abruptly narrows at approximately one-third distance from the bottom. The bottle then remains a straight cylinder up to the cap. The cap is a round cylinder with sets of three raised vertical lines, spaced evenly apart. The crown of the cap consists of a rounded top, with a rim slightly overhanging the bottom cylinder of the cap. At the top of the crown of the cap is a raised round rim, surrounding a small, short, flat, slightly raised cylinder at the apex of the cap. The applicant claims the color black, with regard to the cap, as a feature of the mark."
Weatherchem began selling a bottle also containing a grinder.
McCormick sued (Justia summary page here, (complaint here).
The matter has now settled (Coverage here).
June 03, 2007
The Shape Of Food To Come
Engadget: "DIY 3D Printer utlizes hot air, sugar to craft random objects"
More on 3D printers here.
Trademark Blog trade dress archives here.
May 20, 2007
New Fertilizer In Old Bottles
43(B)log comments in a fertilizer comapny's practice of selling its product in recycled soda bottles, As
pointed out, there's an interesting issue of re-using bottles that themselves may have distinctive shapes but there's an even more novel issue of claiming trade dress protection in that practice of having inconsistent packacging.
Vending Machines In Scotland
May 09, 2007
You Heard It Here, Uh, Early
Remember the Shape Blog? This is what I was talking about: Three-dimensional printers for $2000. You're protecting your designs, right? When 3D printers are found in every college, there'll be a Napster for jewelry. When they're $500, the parts industry will be turned upside down. And at some point people will be able to 'print' a Navy Chair in their home.
March 31, 2007
Chanel-Style Bracelets?
Counterfeit Chic and the case of the scrimshaw bracelets.
February 14, 2007
Who Is This?
Hint: inspiration for one of the better selling U.S. novels of all time.
Discussion of the cover of Jonathan Livingston Seagull garnering zero % unaided awareness here.
February 12, 2007
This Year's Model
January 29, 2007
Levi Strauss: CYA Tactics Re Back Pocket Stitching?
Levi Strauss owns registrations that cover the design of the back pockets, such as this one:
which is described as:
"a double arcuate and tab design shown on the shape of a pocket, as indicated by a solid line. The lining and shading shown in the drawing are features of the mark and not intended to indicate color."
This NY Times article reports on Levis' active efforts to police its pocket design. The Times, with the help of Thomson West, created this terrific graphic to illustrate some of the third party pocket designs Levis has sued:
The article quotes competitors who suggest that this litigation is some how related to Levis' failure to take part in the emerging $200 jean market. I'm skeptical - Levis had a reputation for being litigious before there was a Seven For All Mankind.
It may be more interesting to ask: what effect has Levis' enforcement of its 'picket fence' of trademarks had on competition in its segment of the jeans market?
p.s. I don't knwo what the provenance is of the photo depicted above, but I encountered it here.
January 26, 2007
Trade Dress Protection In A Web Page
Why are there not more decisions regarding the trade dress of a web page? Is it because copyright preempts most such claims? Magazine covers have been awarded trade dress protection,Time Inc. v. Globe Communications Corp., 712 F.Supp. 1103 (S.D.N.Y. 1989), why not web pages? (I've been puzzling about the trade dress of magazine covers for a while).
Any way, the Western District Court of Washington has upheld a Motion to Dismiss a trade dress claim for a webpage, ruling that at this stage of the litigation, the copyright claim will not preempt the trade dress claim (link to the decision in this post from the Seattle Trademark Lawyer).
From Footnote 8:
" As a novel theory legal, there are more articles supporting trade dress protection for the “look and feel” of websites than there are published cases deciding the merits of this theory. See G. Peter Albert, Jr. & Laff, Whitesel & Saret, Ltd., Intellectual Property Law in Cyberspace 198-99 (1999 & Supp. 2005) (“One of the next conflicts to arise between the Internet and trademark law is likely to be the question of whether a Web page contains elements protectable as trade dress. . . . Trade dress protection of Web pages has yet to be the central issue in an infringement claim.”); Xuan-Thao N. Nguyen, Should It Be a Free For All? The Challenge of Extending Trade Dress Protection to the Look and Feel of Web Sites in the Evolving Internet, 49 Am. U.L. Rev. 1233, 1276-77 (2000) (“The purpose of Section 43(a) of the Lanham Act is to protect consumers from being deceived as to the source of a product or service. To fulfill that purpose, it is logical to extend trade dress protection to the overall look and feel of web sites that are inherently distinctive or have acquired secondary meaning and are non-functional.”); Jason R. Berne, Comment, Court Intervention But Not In a Classic Form: A Survey of Remedies in Internet Trademark Cases, 43 St. Louis L.J. 1157, 1172 (1999) (“One as yet barely broached area of Internet trademark litigation involves trade dress of a website. In such a case, a plaintiff may claim that the defendant has in some way infringed on the ‘total image and overall appearance’ of a site, rather than one single trademark. Although no cases of trade dress infringement of a website have been reported, at least one claim has been filed on this basis.”).
December 28, 2006
The Penumbra Of Marilyn Monroe and Betty Crocker and Aunt Jemima
Plaintiff winery licensed the MARILYN MONROE name and likeness from the Monroe licensing entity, and sold wine under the MARILYN MONROE brand for many years, displaying a succession of images of Marilyn on its labels, over the years. At one point it also licensed the copyright in a famous nude photograph of Marilyn on Red Velvet, from the photographer (historical aside - nude photos used to be scandalous) and sold wine with the photo on the label. The photographer terminated the license and then licensed the photo to Defendant, a different winery, which reproduced the photo on its label. Plaintiff sues on trademark infringement for use of a photo that it can no longer use, but defendant can.
As discussed here by Prof Patry, plaintiff prevails. Even though defendant utilized the work under a valid copyright license, such use created a likelihood of confusion with plaintiff's trade dress, which consisted in part of the likeness of Marilyn on the label. The good professor questions the decision, noting the paradox that the plaintiff could prohibit the use of an image by the rightful owner, when itself could not use that image.
I've been emailing and phoning Bill this week about this paradox, and I think we pretty much agree now that the decision is ok. I guess I would phrase it this way - the bundle of rights that is a trademark, contains a negative right to prohibit all those usages that would create the likeihood of confusion but the bundle of positive rights is not identical - the trademark owner cannot use all similar images to its own, if it does not own copyright in them.
Example: Coca Cola has by now built up strong rights in the use of polar bears as trademarks for Coke. I might create a polar bear and own valid copyright in it - except that I cannot use it as a trademark for soda if it creates a likelihood of confusion with Coke's trademark rights (and, Coke cannot use an image of a polar bear that infringes my copyright in my polar bear).
So the scope of protection for a 'fluid' trademark can be hard to articulate with precision. Take images that have been updated many times over the years, such as the BETTY CROCKER or AUNT JEMIMA logos. Some of these images have been modified so any times that, from a copyright point of view, had they been independently created, the first in the series might not infringe the copyright in the last of the series (see the series of Betty Crocker images below, for example).
One would have to do a likelihood of confusion analyis of the marks still in use, a copyright analysis of images no longer in use, as well a 'residual goodwill' analysis of logos no longer in use, to identify all the potential images that would infringe the trademark rights in this 'series' of marks. I'll call the totality of the prohibited usages the negative penumbra.
However, within that negative penumbra may be certain images in which third parties lawfully own the copyright, for example because it was an artistic work that makes fair use of the protected image.
It would seem therefore that the 'positive penumbra' of trademark rights would be smaller than the negative penumbra, as the trademark owner would not itself be able to use those images without the permission of the copyright owner - the Red Velvet Marilyn photo being one such example.
Berry Croker image from here.
'Home Cookin' image from here.
December 13, 2006
Evel Knievel Sues Kanye West And AOL Over 'Evel Kanyevel"
TheSmokingGun provides a copy of the complaint filed by Evel Knievel in the Middle District of Florida, alleging that musician Kanye West infringed Mr. Knievel's rights in his name, likeness and jumpsuit (I'm serious about the jumpsuit), by portraying a character named EVEL KANYEVEL who attempts to leap a canyon in a rocket, in his music video for the song 'Touch The Sky" (above).
Interestingly, AOL is a named defendant, apparently because it returns the video as a search result for a search for EVEL KNIEVEL.
November 06, 2006
STRIP HOUSE v STRIP STEAK (On The Strip)
WSJ Law Blog: "How Dare You Copy Our Goose Fat Fried Potatoes" (Owner of STRIP HOUSE protests use of name STRIP STEAK and trade dress in Las Vegas).
October 28, 2006
Trade Dress of Chair
September 29, 2006
Just For The Taste Of It
Discussion of COCAINE energy drink here.
September 21, 2006
"When The Packaging Makes It Perfect"
IHT: "When the packaging makes it perfect" (On the Tiffany Blue Box and other luxury packaging).
August 30, 2006
Target's Target?
Counterfeit Chic on a new Target handbag and its, uh, inspiration.
July 21, 2006
Showing Off Your New Trade Dress
Details here at Shape Blog.
June 28, 2006
Best Title For An IP Post:
"'Hooters' Loses Its Appeal" re 11th Circuit affirmance of a lower court decision dismissing Hooters' claim that a rival establishment infringed whatever rights it may have in the 'Hooters Girl.' Follow the links for interesting discussion regarding the extent to which an employee's unifom can function as trade dress (pun intended).
April 06, 2006
P&G Complaint Re 'Pearlized' Tampax Trade Dress
Glenn Mitchell, Schwimmer Mitchell's head of litigation, writes:
Procter and Gamble and its subsidiary Tambrands, manufacturer of TAMPAX tampons, have filed suit in the Eastern District of New York against First Quality Hygienic, Inc., claiming trademark and trade dress infringement of Plaintiff's federally registered PEARL and PEARL PLASTIC marks and the packaging for TAMPAX PEARL tampons, which feature a smooth tapered plastic applicator (ED: we can email you the complaint).
The complaint itself is a straight-forward complaint, identifying the elements of the trade dress and seeking relief for trade dress infringement, trademark infringement and unfair competition by use of a confusingly similar mark.
The defendant allegedly uses the terms "pearlized" and/or "pearlized plastic" on the packaging for its competing plastic applicator tampon line. Preliminary research indicates that there is somewhat common generic reference to plastic applicator tampons as "pearlized," and this may be asserted as a defense. I have no specialized knowledge in the industry to know whether this defense would have any legs.
On the trade dress side, however, it appears that the defendant is on shakier ground, as defendant is alleged to use packaging that not only replicates the colors of plaintiff's packaging (the copy of the complaint that we reviewed was in black and white), and to adorn the packaging with a curved depiction of a string of pearls, which is also featured on plaintiff's packaging. Even if the term "pearlized" is weak or generic, this packaging element would appear to be distinctive and protectible.
Without making an evaluation of the strength of plaintiff's case or arguments concerning defendant's intent, I refer you to the website of First Quality and invite you to compare and contrast the packaging (and marks) of various of its products to well-known brands.
Although, in the interests of decorum, I have avoided making any puns, at the risk of destroying such decorum, I'll suggest that we revisit the status of the case every four weeks or so.
March 10, 2006
Wrigley Sues Cadbury Over TRIDENT And DENTYNE Trade Dress
Wrigley has sued Cadbury in the Northern District of Illinois, over Cadbury's use of the TRIDENT E-Z Close Pack (pictured above) and DENTYNE Soft Chew Pack.
Wrigley's trade dress is described as:
'a curved edge along a face of the packaging; a half circle design on the lower portion of a face of the packaging; and the display of the product when the packaging is in an open position such that a portion of the products is visible.'
Text of complaint here.
UPDATE: Our litigation partner, Glenn Mitchell, gave the complaint a once-over and this is his reaction:
The complaint is, to put it diplomatically, minimalist, in that:
Wrigley does not identify the brand with which it uses the trade
dress;
No photos or drawings of the claimed trade dress appear in, or are referenced in the complaint;
While not strictly necessary, if one is claiming that one's trade dress has acquired distinctiveness, we would expect to some factual underpinning, in the nature of reference to sales, third party press, or specific activities calling attention to the trade dress as a source identifier (so-called "look for" advertising)
We are also struck by the fact that defendant's marks are DENTYNE
and TRIDENT, among the most famous gum trademarks in the country and we suspect, based on our vast gum-consuming experience, that the major Wrigley brand employing the claimed trade dress is ORBIT, which itself has become very well-known.
We are reminded of the EXCEDRIN PM/TYLENOL PM case (Bristol Meyers
Squibb v. McNeil ppc,973 F2d 1033 (2d Cir 1992), which held, among other things, that, even in the face of clear evidence of intentional copying, the prominent use of famous marks on the packaging may prevent confusion between otherwise similar packages.
We also did some field research, going to a candy store at lunch, to investigate point of purchase display of gum, where we observed that the packages at issue are displayed with the famous brand names on the front, and the trade dress elements in question on the back, such that they would not be visible to the consumer until picked up.
Also, we note that at least the Trident package is called the "E-Z
Close Pack," suggesting that they are promoting their packaging as functionally superior (a test run proves that this is so, particularly compared to previous TRIDENT packaging, which tended, once opened, to deposit individual sticks in whatever pocket/handbag the package was stored).
In any event, Plaintiff's argument that defendant's modification of the
packaging disproves functionality (an apparent variant of the long-since-rejected axiom that intentional copying is evidence of distinctiveness) is not self-evident - don't manufacturers desire to improve functionality?
Finally, we had Greek food for lunch (and therefore we needed some especially minty gum).
March 09, 2006
Answer To BOUNTY Trade Dress Question
March 08, 2006
Trade Dress Puzzle
Trade Dress brain teaser here.
March 03, 2006
Confusingly Similar Breasts
November 25, 2005
REDLINE v. RED BULL
Makers of REDLINE energy drink bring trade dress declaratory judgment against RED BULL. Copy of REDLINE complaint here, commentary via Nutritional and Dietary Supplement Law Blog.
October 14, 2005
Yamaha ATV v. Yamoto ATV
Yamaha (top) sues Yamoto for selling a 'copy cat' all terrain vehicle. Claims apparently include trade dress. Press release here.