CAN COLOR QUALIFY FOR
THINK OF THE MANY PRODUCTS YOU
ASSOCIATE WITH A CERTAIN COLOR.
FOR EXAMPLE, PINK ARTIFICIAL
SWEETENER IS AUTOMATICALLY
ASSOCIATED WITH SWEET „N‟ LOW.
QUALITEX COMPANY V.
JACOBSON PRODUCTS COMPANY
•Since 1950 Qualitex sold pads to dry cleaners
•These pads were a distinctive shade
•In 1989 Jacobson began to market the same color pads
•In 1991, Qualitex registered the special green-gold
color on press pads with the Patent and Trademark
office as a trademark
•Qualitex sued Jacobson for unfair competition and
•The District Court found for Qualitex on both counts
•The Ninth Circuit set-aside the Trademark judgment
•The court found that the Lanham Act did not offer protection to color alone
•The Circuit Courts were split on the issue of whether or not color could be
QUALITEX AT THE SUPREME COURT
•§ 1127 of the Lanham Act allows for color to be the subject of a trademark
•Color alone can indicate the source of a product
•Color can identify and distinguish goods
•Color cannot be the subject of trademark protection if it is functional
o Allowing this would inhibit competition
•Allowing colors to be used as trademarks will not lead to the court having to
make value judgments about differences in shades of a color
•Colors are usually not so limited that there will be a shortage that would
IF CERTAIN ASPECT OF A PRODUCT IS
FUNCTIONAL, IF IT IS NECESSARY FOR
COMPETITORS TO MARKET COMPETING
PRODUCTS, THE ASPECT CANNOT BE
IN RE: MORTON-NORWICH PRODUCTS,
THE TRADEMARK AND THE PRODUCT MUST BE
This helps to This Sometimes, the
ensure that distinction is entire product can be
there is a sometimes the subject of
supply of forms hard to trademark protection,
for products make but only when the
form is nonfunctional
IN RE: MORTON-NORWICH PRODUCTS,
The normal or A legal conclusion
action of anything
IN RE: MORTON-NORWICH PRODUCTS,
FUNCTION MEANS UTILITY
If an aspect of Utility is a question of If there are other
the product has degree – trademark alternatives
utility, it cannot protection may available, it is more
be the subject depend on how likely that trademark
of trademark functional the aspect protection will be
protection of the product is available
IN RE: MORTON-NORWICH PRODUCTS,
•Because of this, competitors need to use it
to compete and trademark protection is not
•The subject of the trademark makes the
UTILITY product superior
•This would not bar trademark protection
for an entire package, when only parts of
the package are necessary for competition
Functionality is a question of fact that requires a
balancing of the needs of one company to identify
its products and the needs of competitors in
creating similar products
SILVERSMITHS v. GODINGER SILVER ART
•Wallace International Silversmiths is as manufacturer of
a line of silverware called Grande Baroque.
•This line consisted of fine sterling utensils with an
ornate, massive, and flowery design on them. The line
sold for thousands or dollars per place setting.
•Godinger Silver art is also manufacturer of silverware.
His line included some of the design elements of Wallace’s
silverware, but which only sold for $20 a place of setting.
•Wallace sued Godinger base on Section 43 (a) of the
Lanham Act and claimed the ornamental design as a
The design is essential for the use or
description of the item
•The Court stated that even if Wallace‟s design had developed
secondary meaning it still could not be protected by a trademark.
•The “GRAND BAROQUE” design was part of the functionality of
the silverware and was therefore not protected by the Lanham Act
ROMM ART CREATIONS v. SIMCHA
• Room Art is a distributor of the art of Itzchak Tarkay
and also had the exclusive rights to distribute her
posters and artwork.
• Simcha distributed limited editions of the art of Patricia
Govezensky whose line simulated the Tarkay style.
• Room Art sued Simcha under Section 43 (a) of the
Lanham Act for infrigment of trade dress
•Tarkay had priority on that style
•Tarkay‟s style had developed a
TARKAY’s ART •Govezensky works created a
(Court Decision) likelihood of confusion among
consumers as to whose work was
•The test for similarity between
pieces of art is whether the works
TRADE DRESS create the same overall
impression when viewed
WORKS OF ART •The court found a “striking”
similarity between the works, and
therefore found it likely that
consumers would be confused
VORNADO AIR v. DURACRAFT
•Plaintiffs’ (Vornado) manufactured from their
patent -a household fan comprised of several
elements, including a spiral grill design, which
plaintiff claimed, improved the fan’s airflow.
•Defendant (Duracraft) produced a fan with
•Plaintiff sued for trade dress infringement,
pursuant to 43 (a) of Lanham Act.
Where a product configuration is a
significant incentive component of an
PATENT invention covered by utility patent, so
POLICY & without it the invention cannot fairly be
said to be the same invention, patent
TRADE policy dictates that it enter into the
DRESS public domain when the utility patents
of the fan expire.
Not every nonfunction configuration
is eligible protection. Court held
NONFUNCTION that the plaintiff could not prevent
defendant‟s use of a similar grill. To
CONFIGURATION hold otherwise would effectively
stop the defendant from practicing
the full invention embodied in the
patented fan once the patent
expired, contrary to the purposes of
the patent law
TRAFFIX DEVICES v.
The manufacturer (MDI) of “Windbuster
outdoor sign stands brought trademark
and trade dress infringment action
against competitor (Traffix) that used
“Windbuster” mark for its traffic sign.
Can be protected under federal law
in an infringement action if the
TRADE matter sought to be protected in not
DRESS functional. Because plaintiff‟s dual-
spring design is a functional feature
for which there is no trade dress
protection, plaintiff‟s claim is barred
The existence of expired utility
patents claiming dual-spring design
EXPIRED mechanism for keeping outdoor
UTILITY signs upright in adverse wind
conditions created strong
PATENTS evidentiary inference by showing
that the design was merely
ornamental, incidental, or arbitrary
precluded trade dress protection for
TWO PESOS v. TACO CABANA
•Taco Cabana operates a chain of Mexican fast-
food restaurants in San Antonio Texas since 1978.
It is recognized that the interior decoration of the
restaurants represents the Mexican culture
•Two Pesos Inc. started doing business in
Houston and expanded around Texas except San
Antonio and took similar atmosphere that Taco
•In 1987 Taco Cabana sued Two Pesos, Inc based
on trade dress infringement section 43 (a)
PROTECTION Secondary Meaning
Trade that is inherently distinctive
(shows the source of the goods or
services) can be protectable
without showing secondary
SAMARA BROS v. WAL-MART STORES
•Samara Brothers, Inc designs and manufactures
a line of children’s clothing.
•Wal-Mart Stores, Inc a chain of retail stores sold
in sale a special line of children’s clothes base on
Samara’s designs without her consent. In fact,
Wal-Mart contracted with Judy-Philipine (JPI) the
manufacture of that clothes and gave her the
•JPI copied the design with some small
modifications and put the Wal-Mart’s house label,
•The allegedly feature is not
•Likely to cause confusion
TRADE DRESS Secondary Meaning
It presents when “in the
minds of the public, the
primary significance of a
(mark) is to identify the
source of the product rather
than the product itself.”
DESIGN IS NOT INHERENTLY DISTINCTIVE.
THEREBY REQUIRE PROOF SECONDARY
IDEAL TOY CORPORATION, Plaintiff, v.
CHINESE ARTS & CRAFTS INC
•Ideal has an exclusive arrangement with
the inventor(a teacher in Hungary, Erno
Rubik) to sell the puzzle in the United States.
•Ideal has applied to register as its
trademark the name Rubik’s Cube.
•Ideal spent more than $1 million on
advertising in one year and has sold well
over $5 million cubes in a relatively short
period of time.
•The defendant is marketing cubes, which
have an appearance strikingly similar to
Is there a great variety of options
available to the “second-comer”?
Colors: If second-comer has many
(ARBITRARY) options regarding colors, shades of
colors, and color combinations,
TRADE DRESS plaintiff‟s distinct color combination
must be considered non-functional.
Start Position (here, start and
finish position with each of the
INJUNCTION: sides containing one solid color):
Defendant had many choices of
• Likelihood of Confusion color combinations,schemes: polka
• Balancing Test dots, fruit patterns, etc.
-Second-comer won‟t suffer Packaging: Here the clear,
hardship (with injunction) cylindrical container is one of many
-Plaintiff will suffer irreparable ways to package the product.
harm that can not be There were other packaging
repaired with monetary options that were far more
damages.(without injunction) economical, available to the
•Each Rubik’s Cube is a solid cube approximately 2 x 2 x 2.
• Each of the six sides of Rubik’s Cube consists of nine smaller cubes,
stacked three cubes high and three cubes across.
• Each of the three levels on a side can be rotated on an axis.
•Brightly colored adhesive squares of six different colors are applied to
the outer faces of each of the 27 smaller cubes.
Plaintiff filed a motion for a preliminary injunction in an action alleging
common law and statutory trademark infringement and unfair competition
under the Lanham Act, (a), and the N.Y. Gen. Bus. Law §§ 133, 368-d.
•There are a great number of color, start positions and packaging options
available to the defendant so as not to directly imitate the trade dress of the
• The number of imitators and the accuracy of the copying of plaintiff’s trade
dress is persuasive evidence that the trade dress has acquired secondary
•A preliminary injunction is warranted because of the irreparable damage to
Ideal’s goodwill and ability to control the nature and quality of goods being
sold that would result if the injunction were denied.
NORA BEVERAGES, INC v. THE PERRIER
GROUP OF AMERICA, INC.,
• Nora marketed spring water under the brand name
NAYA, using clear, ribbed plastic bottles made from
polyethylene terephthalate ("PET") on which it affixed a
dark blue label.
•PET is a clear, strong and environmentally-friendly resin
that was developed in the early 1970s by Dupont and is
now widely used among bottled drink manufacturers.
• The ribbed bottles are endowed with a "waist" that
creates what Nora refers to as a "bottle upon bottle"
•Perrier, through its subsidiary Poland Spring, then began
to market spring water in 1.5 liter plastic bottles carrying
their own prominent brand name labels.
Courts look to the
POLAROID “totality” of the product:
OF TRADE DRESS •Strength of mark
INFRINGEMENT •Degree of Similarity
•Proximity of the Products
STRENGTH OF MARK •Likelihood that owner will
bridge the gap
• Labels can be integral, if not
dispositive, factors in •Actual Confusion
determining overall similarity •Defendant’s good –faith
of trade dress
in adopting its own mark
• Courts will determine if marks
are so dissimilar that no
•Quality of Defendant’s
question of fact is presented product
(thus a summary judgment will •Sophistication of the
•This ten-year dispute involves the trade dress of 1.5-liter plastic bottles used for
packaging spring water.
•Plaintiff spring water bottler sued competitors, alleging various claims including
trade dress infringement, under § 43(a) of the Lanham Trademark Act
•The district court granted summary judgment and dismissed Nora's trade dress
and state law claims against PGA and other defendants.
•Nora appealed arguing, that the district court improperly dismissed its claim for
trade dress infringement (a) by reconsidering the issue of distinctiveness and
finding Nora's bottle to be generic, (b) by applying the wrong legal standard for
"likelihood of confusion," and (c) by considering issues of arguable fact in applying
the Polaroid factors; and
•The court of appeals affirmed, as a reasonable trier of fact could not find for the
bottler on the likelihood of confusion issue.
•The presence of the prominent and distinctive labels on the competitors' bottles
alone: 1) negated any intent to deceive, 2) negated any possibility of a likelihood of
confusion, and 3) provided sufficient basis for affirming the district court's grant of
•The bottler offered only minimal evidence of actual confusion, which did not
include consumer surveys.
•Copying the bottler's bottle alone was insufficient to establish bad faith on the