| You were correct to cite Two Pesos regarding trade dress protection under
the Lanham Act, and the Cornell LII definition you quoted is quite helpful as
well, but you left out a very important piece of the issue. The most important
part of the Cornell quote, in this context, is that "The Lanham Act protects
trade dress if it serves the same source-identifying function as a
trademark." There's a lot of meaning hidden in that condition, which I'll
try to unpack.
Under US trademark law, there are two ways that something can
serve as the identifier of the source of goods or services*, and thus
be treated as a trademark: it can be "inherently distinctive," which
means that it would be considered as a source-identifier even by a consumer who
has had no previous exposure to it; or else it must show "acquired
distinctiveness" (also, less helpfully, called "secondary meaning"), which
means that consumers have been trained, through repeated exposure, to consider
it as a source-identifier. The most common way to demonstrate acquired
distinctiveness (because it's specifically allowed by statute) is to provide
"proof of substantially exclusive and continuous use thereof as a mark by the
applicant in commerce for the five years before the date on which the claim of
distinctiveness is made."
Among word marks, those that are "arbitrary"
(KODAK is the classic example), "fanciful" (e.g., APPLE for a record company),
or "suggestive" (e.g., GREYHOUND for a bus company) can have inherent
distinctiveness and gain federal protection from the instant they're first used
in commerce; a "descriptive" name (e.g., FAST for a bus company) would need to
earn acquired distinctiveness before becoming protected as a trademark. A
"generic" mark (e.g., BUS COMPANY for a bus company), however, is categorically
ineligible for trademark protection. (For more on these categories of marks, see
page *9 of Abercr
ombie & Fitch v. Hunting World.)
Of course, it's not just words
that can serve the "source-identifying function" referred to above. As the
Supreme Court put it in Quali
tex v. Jacobson Products, when it held that colors, though not
inherently distinctive, can acquire distinctiveness (sorry for the long
quote):
The Lanham Act gives a seller or producer the exclusive
right to "register" a trademark, 15 U. S. C. § 1052, and to prevent his or her
competitors from using that trademark, § 1114(1). Both the language of the Act
and the basic underlying principles of trademark law would seem to include color
within the universe of things that can qualify as a trademark. The language of
the Lanham Act describes that universe in the broadest of terms. It says that
trademarks "includ[e] any word, name, symbol, or device, or any combination
thereof." § 1127. Since human beings might use as a "symbol" or "device" almost
anything at all that is capable of carrying meaning, this language, read
literally, is not restrictive. The courts and the Patent and Trademark Office
have authorized for use as a mark a particular shape (of a Coca-Cola bottle), a
particular sound (of NBC's three chimes), and even a particular scent (of
plumeria blossoms on sewing thread). If a shape, a sound, and a fragrance can
act as symbols why, one might ask, can a color not do the same?
A color
is also capable of satisfying the more important part of the statutory
definition of a trademark, which requires that a person "us[e]" or "inten[d] to
use" the mark
"to identify and distinguish his or her goods,
including a unique product, from those manufactured or sold by others and to
indicate the source of the goods, even if that source is unknown." 15 U. S. C. §
1127.
True, a product's color is unlike "fanciful,"
"arbitrary," or "suggestive" words or designs, which almost automatically tell a
customer that they refer to a brand. Abercrombie & Fitch Co. v. Hunting
World, Inc., 537 F. 2d 4, 9-10 (CA2 1976) (Friendly, J.); see Two Pesos,
Inc. v. Taco Cabana, Inc., 505 U. S. 763, 768 (1992). The imaginary word
"Suntost," or the words "Suntost Marmalade," on a jar of orange jam immediately
would signal a brand or a product "source"; the jam's orange color does not do
so. But, over time, customers may come to treat a particular color on a product
or its packaging (say, a color that in context seems unusual, such as pink on a
firm's insulating material or red on the head of a large industrial bolt) as
signifying a brand. And, if so, that color would have come to identify and
distinguish the goods—i. e., "to indicate" their "source"—much in the way that
descriptive words on a product (say, "Trim" on nail clippers or "Car-Freshner"
on deodorizer) can come to indicate a product's origin.
The
key holding of Two Pesos, meanwhile, is that for trade dress, "proof of
secondary meaning is not required to prevail on a claim under § 43(a) of the
Lanham Act where the trade dress at issue is inherently distinctive." The
necessary implication is that, unlike a color, trade dress can be
inherently distinctive.
Alright; so what; why am I making a big deal of
this? Because the shape of the iPhone isn't "trade dress." Eight years after
Two Pesos, the Supreme Court decided Wal-M
art v. Samara Brothers, where it noted that "trade dress" is "a category
that originally included only the packaging, or 'dressing,' of a product, but in
recent years has been expanded . . . to encompass the design of a product."
After giving a brief overview of inherent vs acquired distinctiveness, and
deciding that product design is at least in principle capable of serving as a
trademark, the opinion gets to the real meat of the holding (again, sorry for
the length of the quote):
Nothing in [the Lanham Act] demands
the conclusion that every category of mark necessarily includes some marks "by
which the goods of the applicant may be distinguished from the goods of others"
without secondary meaning—that in every category some marks are inherently
distinctive.
Indeed, with respect to at least one category of mark—
colors—we have held that no mark can ever be inherently distinctive. In
Qualitex, petitioner manufactured and sold green-gold dry-cleaning press
pads. After respondent began selling pads of a similar color, petitioner brought
suit under § 43(a), then added a claim under § 32 after obtaining registration
for the color of its pads. We held that a color could be protected as a
trademark, but only upon a showing of secondary meaning. . . .
It seems
to us that design, like color, is not inherently distinctive. The attribution of
inherent distinctiveness to certain categories of word marks and product
packaging derives from the fact that the very purpose of attaching a particular
word to a product, or encasing it in a distinctive packaging, is most often to
identify the source of the product. Although the words and packaging can serve
subsidiary functions—a suggestive word mark (such as "Tide" for laundry
detergent), for instance, may invoke positive connotations in the consumer's
mind, and a garish form of packaging (such as Tide's squat, brightly decorated
plastic bottles for its liquid laundry detergent) may attract an otherwise
indifferent consumer's attention on a crowded store shelf—their predominant
function remains source identification. Consumers are therefore predisposed to
regard those symbols as indication of the producer, which is why such symbols
"almost automatically tell a customer that they refer to a brand," and
"immediately . . . signal a brand or a product `source.'" And where it is not
reasonable to assume consumer predisposition to take an affixed word or
packaging as indication of source—where, for example, the affixed word is
descriptive of the product ("Tasty" bread) or of a geographic origin ("Georgia"
peaches)—inherent distinctiveness will not be found. That is why the statute
generally excludes, from those word marks that can be registered as inherently
distinctive, words that are "merely descriptive" of the goods, § 2(e)(1), 15 U.
S. C. § 1052(e)(1), or "primarily geographically descriptive of them," see §
2(e)(2), 15 U. S. C. § 1052(e)(2). In the case of product design, as in the case
of color, we think consumer predisposition to equate the feature with the source
does not exist. Consumers are aware of the reality that, almost invariably,
even the most unusual of product designs—such as a cocktail shaker shaped like a
penguin—is intended not to identify the source, but to render the product itself
more useful or more appealing.
The fact that product design almost
invariably serves purposes other than source identification not only renders
inherent distinctiveness problematic; it also renders application of an
inherent-distinctiveness principle more harmful to other consumer interests.
Consumers should not be deprived of the benefits of competition with regard to
the utilitarian and esthetic purposes that product design ordinarily serves by a
rule of law that facilitates plausible threats of suit against new entrants
based upon alleged inherent distinctiveness. . . .
Respondent contends
that our decision in Two Pesos forecloses a conclusion that
product-design trade dress can never be inherently distinctive. . . . Two
Pesos unquestionably establishes the legal principle that trade dress can be
inherently distinctive, but it does not establish that product-design
trade dress can be. Two Pesos is inapposite to our holding here because
the trade dress at issue, the décor of a restaurant, seems to us not to
constitute product design. It was either product packaging—which, as we
have discussed, normally is taken by the consumer to indicate origin—or
else some tertium quid that is akin to product packaging and has no
bearing on the present case.
The shape of a smartphone
certainly seems to me to be more an issue of product design than
packaging/dress. That being the case, if Apple wants to rely on the Lanham Act
to protect the shape of the iPhone, it will have to prove acquired
distinctiveness, because Two Pesos and the possibility of inherent
distinctiveness simply do not apply.
Please note that I am only commenting
about the general state of the law around trade dress and product design. I
haven't read the briefs in this case; I don't know what evidence is being
offered; I don't know whether Apple has managed to produce evidence of acquired
distinctiveness and convinced the Patent and Trademark Office to issue it a
trademark registration for the shape of the iPhone. Also, please note that
infringement of a design patent is a separate cause of action from
infringement of a product design used as a trademark, and I'm only
talking about the latter.
* I am omitting discussion of other kinds of
mark (e.g., certification marks) for simplicity. If you know what they are, you
probably didn't need this explanation in the first place. [ Reply to This | Parent | # ]
|
