Elizabeth Bishop 28 Sep 03 10:03 PM MST A. what, if any, problems the decision in that case holds for O'Leary Food Company 1) Distinctiveness Trade Dress in the Cabana case is defined by statute as the shape and overall appearance of the exterior, appearance and placement of signs, décor, menus and servers uniforms, etc. To gain TM protection, you must be using the dress as a way to distinguish your goods and services from those of others. Per [Lanham, sec. 1127] Suggestive, arbitrary or fanciful marks that ―because of their intrinsic nature serve to identify a particular source of a product, are deemed inherently distinctive‖ and are protected. Thus, according to the Cabana case, to qualify for TM protection you must show the dress is inherently distinctive, or that it has acquired secondary meaning. 2) Functionality Only nonfunctional, distinctive trade dress is protected under Lanham sec.43. This means that of the numerous elements of the dress when considered together, may not be functional (primarily) and thus, equally available to competitors. [5th Circuit, pg. 373] Thus, according to the Cabana case, to qualify for TM protection you must also show the dress is nonfunctional when considered together. B. what steps can O'Leary Food Company take to avoid those problems? 1) Distinctiveness of ―Supersizing‖: You must show that the décor, menu, overall appearance, etc. of this franchise is inherently distinctive of your restaurant services It will be difficult to distinguish your services from those of a famous competitor MacDonald‘s. Your use of similar colors green and gold in your ―Green Arches‖ logo and reference to ―Supersizing‖ in your menu is substantially similar to MacDonald‘s red and green ―Golden Arches‖ and their ―Super Size‖ portions of their menus. If you are not willing to alter your trade dress, it is your burden to show that MacDonald‘s trade dress has not acquired secondary meaning, or is simply functional. This may be difficult since MacDonald‘s also already registered their ―Arches‖ logo and ―Super Size‖ marks. If you choose to use your ―Green Arches‖ and ―Supersizing‖ names anyway, you will not be innocent junior users in an unknown market. Jonathan Bishop I. What, if any, problems does the Two Pesos, Inc. v. Taco Cabana, Inc., decision holds for O'Leary Food Company: In Two Pesos, Inc. v. Taco Cabana, Inc, the operator of a chain of Mexican restaurants sued the operator of similar chain for trade dress infringement under Lanham Act. [Lanham Act §43(a) at 15 USCA §1125] The trial court held Judgment for the plaintiff. Defendant appealed & Court of Appeals affirmed. The Supreme Court held Trade dress which is inherently distinctive is protectable under Lanham Act without showing that such trade dress has acquired secondary meaning, since trade dress itself is capable of identifying products or services as coming from specific source. Therefore, McDonald‘s will only have to show that their menu, arches, layout and design, etc. are distinctive, and do not have to show that their trade dress has acquired secondary meaning. A. Distinctiveness of McDonald‘s Marks: Under Trademark law, marks are protectable when they are (1) descriptive; (2) suggestive; (3) arbitrary; or (4) fanciful because they are deemed inherently distinctive. Generic marks are not registrable or protectable. In this case, the ―Golden Arches‖, ―Supersized‖ menu option and restaurant characters are all distinctive to McDonalds food chain. Liability for trade dress infringement under Lanham Act requires proof of likelihood of confusion. In this case, McDonalds is very well known and it is likely that people will be confused by seeing ―Green Arches‖ and similar restaurant designs and menus. However, under Wal-Mart Stores Inc. v. Samara Brothers, Inc. – ―color‖ can never be inherently distinctive, although they can be protected upon a showing of secondary meaning. The color scheme of O‘Leary‘s restaurant s may be different but the layout, design and especially the arches have acquired secondary meaning to people who seek out junk food off the freeway. It is not the ‗green‘ that is the problem, but rather using the arch shape and McDonald‘s designs. B. Burden of Proof to show Distinctiveness vs. Functionality: Under TrafFix Devices v. Marketing Displays, [Sec. 43(3)] the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional. Therefore, McDonald‘s must show that the arches, in tandem with its menu, restaurant layout, characters and colors all create the McDonalds ―look‖ which is protectable. See Hartford House v. Hallmark Cards, Inc., which held a combination of features may be nonfunctional and thus protectable as "trade dress" even though the combination includes functional features. Here, the appropriate inquiry is not whether each individual feature of the trade dress is functional but whether the whole collection of features, taken together, is functional. It is not likely that O‘Leary will be able to show that all these features taken as a whole are simply functional aspects of their business C. Standing McDonald‘s has standing to sue O‘Leary Food Company. Under the Lanham act section 43(a) ―any person who believes that he or she is or is likely to be damaged by such act‖ of infringement has a claim. McDonald‘s would be entitled only to injunctive relief to stop O‘Leary from creating their food chain similar to McDonalds, unless O‘Leary willfully intended to trade on the owner's reputation or to cause dilution of the famous mark. Here, O‘Leary is clearly liable for attempting to copy McDonald‘s look and feature, and therefore will be potentially liable for Macdonald‘s lost profits, damages, and attorney‘s fees. D. O‘Leary‘s Misrepresentation: In a sense, O‘Leary is attempting to misrepresent the quality of their goods by copying the look of McDonalds. When people see a McDonalds they know what to expect and although the term ―good food‖ is subjective some will depend on the quality or type of food McDonalds sells. See Crossbow Inc. v. Dan-Dee Imports, Inc. – Where the defendant was held liable for removing the Plaintiff‘s TM & other ID insignia from product, replacing w/ it‘s own and using mislabeled product as demo model for inferior imitation. O‘Leary is not puffing bu stating its product is better, rather, they are trying to be a similar to McDonalds as possible to compete with the chain, and hopefully attract some of McDonald‘s clientele. II. What steps can the O'Leary Food Company take to avoid those problems: The name ‗O‘Leary‘s‘ with a yellow and green color scheme is not actionable by McDonalds because that name and colors are distinctive from McDonalds and is not misleading to consumers about the source of the product. See Twin Peaks Productions, Inc. v. Publications Intern., Ltd. However, O‘Leary‘s attempt to ―copy‖ the ―Golden Arches‖, ―Supersized‖ menu, layout, design, and characters of McDonald‘s will be actionable under the Lanham Act Unfair Competition law for Trade Dress infringement. I would suggest developing distinct logos, menus, and characters that are as appealing as McDonalds, but that do not copy their original designs. Building their own restaurant franchise model will prevent the claims that McDonalds will have should O‘Leary go forward with their current restaurant business model. Francesca Clough 28 Sep 03 10:55 PM MST Problem 5 In Two Pesos Inc v Taco Cabana, the court held that the defendant was guilty of infringing the plaintiff's trade dress, when considering the two very similar restaurants. Trade dress is the overall appearance, including colors, printing styles, color schemes, decor,etc. The protection of trade dress is covered under Section 43(a) of the Trademark Act (Lanham Act). In order to qualify for protection, the trade dress must be deemed either (1) inherently distinctive, or (2) to have acquired secondary meaning. Functionality must also be looked at, which is basically a totality of the circumstances test. McDonald's trade dress is inherently distinctive considering the golden arches, the colors, and the layout. Given the holding in Two Pesos, it is likely that the color scheme, green arches, and O'Leary clown will result in a similar finding of trade dress infringement, should O'Leary still choose to open their restaurants under the current circumstances. It would be my advice to change the color scheme to perhaps three combinations, staying away from red and yellow. They should choose a concept other than green arches, and a different signature character Genevieve Dominguez 28 Sep 03 10:13 PM MST I would advise my client, O‘Leary Food Co. (hereinafter, ―O‖) that they may possibly infringe on McDonald‘s ―trade dress‖. Trade dress is the total image of a product and may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques. In the instant case, O is modeling their trade dress after McDonald‘s by having similar graphics (golden arches), colors (yellow and green vs. yellow and red), and sales techniques (‗supersizing‘). In TWO PESOS, INC V. TACO CABANA, INC, Two Pesos imitated Taco Cabana‘s trade dress by having the same festive eating atmosphere, bright colors, paintings and murals, umbrellas in the patio area, etc. In order to be protected, a mark must (1) be inherently distinctive, or (2) acquired distinctiveness through secondary meaning. To be inherently distinctive, the mark or must not be descriptive. For a mark or dress to be distinct through secondary meaning, it has to come through use to be uniquely associated with a specific source. To prove secondary meaning, a manufacture must show that, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself. However, the court in TWO PESOS found that the requirement that the mark be distinct through secondary meaning does NOT have to be met. Rather, it was enough that the mark be inherently distinctive for the court to find trade dress infringement. In the case at bar, if O were to continue with their sales plan, McDonald‘s will most likely succeed in a trade dress infringement suit. Not only would McDonald‘s win the suit, they will probably receive high damages. O intentionally and purposely infringed by modeling their business/marketing plan according to McDonalds‘ trade dress. Sean Donrad 28 Sep 03 4:40 PM MST O'Leary, is that worth it? Trade dress (a distinctive, nonfunctional feature, which distinguishes a merchant's or manufacturer's goods or services from those of another ) is protectable under § 43(a) without a showing that it has acquired secondary meaning, since such trade dress itself is capable of identifying products or services as coming from a specific source. Two Pesos 1992. But in Wal-Mart 2000, the Supreme Court ruled that product configurations are never inherently distinctive and therefore are eligible for trade dress protection only after acquiring secondary meaning. Secondary meaning is created in a trademark when the public has learned to identify the name of a product with its source. Secondary meaning for the purpose of trademark law is when a party through advertising or massive exposure establishes its trademark in the minds of consumers as an indication of origin from one particular source. McDonald‘s name is fanciful and arbitrary and thus inherently distinctive. O‘ Leary is a food company which intends to ―copy‖ the layout and design of McDonald‘s restaurant including the Golden Arches and clown character. This will have a misleading representation effect on the consumers. O‘ Leary‘s copying of McDonald‘s Trade Dress (total image of business) is likely to cause confusion, or to deceive as to the affiliation, connection, or association with McDonalds under § 1125 (a). However, supersizing (not inherently distinctive under Walmart, unless it has acquired secondary meaning by McDonald‘s), food menu (if not in conjunction with the overall layout of McDonald‘s), use of green and yellow colors (which would render O‘ Leary‘s products more appealing), and even arguably the use of a clown with green and yellow colors ( a design used to improve the saleability of a O‘ Leary‘s products) may be found functional. However these arguments are counterarguments for a possible infringing suit where the winner may be entitled to injunction relief, profits and damages. O‘Leary should make a business decision as to whether their overall similarities to McDonald‘s and possible increase of sales are worth a certain litigation in the future with McDonald‘s. Jeremy Ford 28 Sep 03 11:33 PM MST O v. Mcd. First of all the key decision referred to is Taco Cabana, and that was the SC stating that secondary meaning by a mark (dress mark) is not required to prevail under 43 (a) of Lanham Act if it is inherently distinctive. Therefor if mark is inherently distinctive then the mark does not have to show a secondary meaning. To be considered a trade dress then the items to be protected under the trade dress must be (a) non functional (food, menus, method of serving food, not decorative means) (b) inherently distinctive or acquired secondary meaning (c) likelihood of confusion (a) the non-functionable elements of the restaurant can be protected under the McD. dress mark if McD. meets all other elements of the case. So they could protect some names on their menu, their lay out, their playground, mascot, golden arches, etc, but I do not think their will be much to discourage the colors if other elements of similarities are removed but they will be an issue if some of the trouble items are not removed like clown, arches. (b) McD might not reach the level of Secondary meaning but they are without a doubt a distinctive dress mark and one of the most well known in the world. On the level of distinctiveness I believ most people would see McD. as fanciful (c) This is where I think O has the best case b/c nobody could cause confusion for Mcd. In my opinion this is a difficult b/c although I do not think that Mcd could be effected or show confusion in the market but I do not know if the court would want to punish them b/c they are so succesful and well known that nobody could be confused with them. I would advise O to lose the clown and the arches and not to copy any names on the menu unless they are merely descriptive of the food item. Jeremy Tray Ford Shinae Helms 28 Sep 03 12:18 AM MST If McDonald‘s trade dress may be protectable under the Lanham Act, O‘Learys should avoid the protectable trade dress. 1. Trade Dress in a Restaurant Trade dress is the total image of the business including the shape and general appearance of the exterior of the restaurant, the identifying sign, the interior floor plan, the décor, the menu, the equipment used to serve food, the servers‘ uniforms and other features reflecting on the total image of the restaurant. Two Pesos, Inc. In McDonalds, the layout and design of restaurants, the Golden Arches, the menu, the supersizing of orders, and the Ronald McDonald clown will be the trade dress. 2. Infringement of Trade Dress For trade dress to be protected under the Lanham Act, the trade dress must have 3 elements; (a) nonfunctionality, (b) inherent distinctiveness (in the case of descriptive trade dress, acquisition of secondary meaning is required), and (c) likelihood of confusion to consumers when the trade dress is infringed. If the trade dress is suggestive, arbitrary or fanciful, and therefore inherently distinctive, proof of acquired secondary meaning is not required. Two Pesos, Inc. a. Nonfuctionality Is McDonald‘s trade dress nonfunctional? Functional trade dress in the restaurant business must be related to food, rather than décor. In McDonald‘s, the red and yellow color scheme, the layout and design of the restaurants, the Golden Arches, and the Ronald McDonald clown constitute nonfunctional trade dress, whereas menu items and supersizing of orders constitute functional trade dress. Therefore, only the red and yellow color scheme, the layout and design of the restaurants, the Golden Arches, and the Ronald McDonald clown may be protected. b. Inherent distinctiveness McDonald‘s nonfunctional trade dress is not descriptive or generic, but rather fanciful or arbitrary. Thus, it is inherently distinctive and may be protected. c. Likelihood of confusion McDonald is known world-wide as a chain of hamburger fast food restaurants and consumers may recognize its trade dress. O‘Learys also plans a business of hamburger fast food restaurants. If O‘Learys copies (and therefore infringes) McDonald‘s trade dress, it is highly likely to confuse consumers about whether the restaurant originated from McDonald‘s. 3. Conclusion Therefore, O‘Learys copying of McDonald‘s protected trade dress such as the green and yellow color scheme, the layout and design of the restaurants, the Golden Arches, and the Ronald McDonald clown would be actionable against O‘Learys under the Lanham Act. However, O‘Learys may copy McDonald‘s menu items and supersizing of orders since they are not protected under the Lanham Act. Marian Kamalani 28 Sep 03 9:26 PM MST Class Six Problem In Two Pesos Inc. v. Taco Cabana Inc., the Supreme Court ruled that an identifying mark is distinctive and capable of being protected if it either 1) is inherently distinctive or 2) has acquired distinctiveness through secondary meaning. The Court also ruled that eligibility for protection under section 43(a) depends on nonfunctionability. Finally, liability under section 43(a) requires proof of the likelihood of confusion. I. Are McDonald's marks inherently distinctive? Suggestive, arbitrary, and fanciful marks are deemed inherently distinctive because they are capable of distinguishing the applicant's goods from those of others. Generic marks or marks that are merely descriptive are not inherently distinctive. However, merely desriptive marks may acquire the distinctiveness which will allow them to be protected if secondary meaning becomes attached to them. McDonald's Golden Arches are inherently distinctive. When you see the arches, you know you are going to McDonald's, not Burger King or Carl's Junior or Wendy's. Their menu items are also inherently disctinctive. When you see an ad for a Big Mac or a Mac Chicken, you know the ad is a McDonald's ad. This does not mean that McDonald's can stop O'Leary from selling a burger or a chicken sandwich. It can be argued that the term supersized is merely descriptive. But even if it is, it has acquired secondary meaning. Only McDonald's drinks and fries can be supersized. Jack in the Box fries are jumbo sized, and if you ask the cashier at Jack in the Box to supersize your fries, he will tell you that he cannot supersize your fries, however, he will be happy to jumbo size them for you. (I use to order supersized fries at Jack in the Box a lot, and I was always corrected. I eventually stopped.) The layout and design of McDonald's restaurants are inherently distinctive. The clown character is inherently distinctive. II. Are McDonald's marks nonfunctional? McDonald's marks are probably nonfunctional. But in the event that a lawsuit is brought against the O'Leary Food Company, the burden of proving that the marks are nonfunctional belongs to McDonald's. III. Will there be a likelihood of confusion? Consumers should not be confused by O'Learys. McDonald's has been around so long that one can instantly tell the difference between the red and yellow color scheme and a green and yellow color scheme, and the names are not even remotely the same. Yet it would be in the O'Leary Food Company's best interest to get rid of the Arches, make changes to their menu items, use the terms small, medium, or large in reference to their fries and drinks, and find another mascot. McDonald's has severely deep pockets and can afford to tie the case up in court. It is simply not worth the hassle for the O'Leary Food Company. Christopher Lai 28 Sep 03 8:32 PM MST Trade dress is the total image of the business. The decor, menu, floor plan, exterior, identifying sign, etc. are all factors in what make up a business's trade dress. Protection of the trade dress serves to "secure the owner of the mark the goodwill of his business and to protect the ability of consumers to distinguish among competing producers. The trade dress of a company may be protected by the Lanham Act if it is inherently distinctive. Only nonfunctional, distinctive trade dress is protected under section 43(a). A design is functional if it is one of a limited number of equally efficient options available to competitors and free competition would be unduly hindered by according the design trademark protection. McDonald's has a very strong case of trade dress infringement. By copying the layout and design of McD's restaurants and menu items, as well as imitating the Golden Arches with Green Arches, O'Leary is copying a nonfunctional inherently distinctive trade dress. There are infinite possibilities for mascots, color schemes, design layouts, and logos available to O'Leary. Perhaps only the menu (how many combinations of patty, bun and cheese are there?) and supersizing of orders may be thought of as functional. However, by creating a green and yellow model of a McDonald's restaurant, O'Leary is infringing on McD's trademark. A customer may still make a mental association with McD's. O'Leary should make efforts to come up with their own design/layout and their own marketing concepts to avoid any trouble with McD's. They should be able to keep the menu and supersizing similar to McD's since they are functional. Matthew Meyers 28 Sep 03 6:08 PM MST As Counsel to the O'Leary Food Company, I would advise them as to what the purpose of a trademark is for. It is any word, name, symbol, or device or any combination thereof used by any person 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. In order to be registered, a mark must be capable of distinguishing the applicant's goods from those of others Marks are often classified in categories of generally increasing distinctiveness; 1. generic 2. descriptive 3. suggestive 4. arbitrary 5. fanciful. Only nonfunctional, distinctive trade dress is protected and a design is legally functional, and thus unprotectable, if it is one of a limited number of equally efficient options available to competitors and free competition would be unduly hindered by according the design trademark protection. Normally marks which are merely descriptive of a product are not inherently distinctive. When used to describe a product, they do not inherently identify a particular source, and hence cannot be protected. However, descriptive marks may acquire the distinctiveness which will allow them to be protected under the Lanham Act. A descriptive mark that otherwise could not be registered under the Act may be registered if it has become distinctive of the applicant's goods in commerce which has become a secondary meaning in this case McDonalds ―golden arches‖ and ―supersizing.‖ For a mark to be registered its identifying mark capable of being protected if it either 1.inherently distinctive or 2.has acquired distinctiveness through secondary meaning. . Kevin Morley 28 Sep 03 7:56 PM MST The main problem O'leary's (O) has is infringing on McDonald's (M) trade dress. Trade dress is the overall appearance and image of a product--the whole package. In Two Pesos v. Taco Cabana, the Supreme Court held that trade dress was protected under section 43(a) of the Lanham Act when the trade dress was sufficiently distinctive and no secondary meaning was required. In determining the distinctiveness of a mark, there are 5 levels: generic, descriptive, suggestive, arbitrary, or fanciful, with fanciful being the most distinctive. Generic or descriptive marks cannot be trademarked unless they acquire secondary meaning. Secondary meaning means that the mark has come to be associated with the producer of the goods or service so as to have a secondary meaning. The Court in Taco said that the trade dress of Taco Cabana was inherently distinctive and was protected. O is fine if they were only going to use the name and colors they have planned. Colors and Product design are not protect able under the trade dress section (Wal Mart). O runs into problems when they in effect try to copy every aspect of McDonald's. The golden arches, clown, layout, etc are all an essential part of McDonald's trade dress and would be as protected easily under the guidelines set out in Taco. A lot of aspects of M's trade dress could stand on their own and have secondary meaning; however, as we know, M does not have to show that their trade dress has secondary meaning, they just have to show that the overall package is distinctive and not functional. The functional aspect relates to patents and you can't use a distinctive aspect of a product that could be/was patented as part of trade dress. Most aspects of M's trade dress don't seem to be functional. If O wants to open a restaurant, there is no problem, but they need to rethink the look because O will have nothing but problems trying to go this route. Mark Pearson 28 Sep 03 9:24 PM MST Is McDonald‘s Trade Dress Protectable, and if so, would O‘Learys be infringing on McDonalds? A. Use of the Color Scheme and the menu and Supersizing Under § 43(a)(3) the plaintiff must show that the tradedress in nonfunctional. Specifically, color has been held to be functional and more akin to product design than trade dress. Therefore, there would be less of a chance of conflict under §43(a) for O‘Lears use of color, menu and supersizing. However, there may be trademark issues on the names of the menu items, ―Quarterpounder‖, ―Big Mac‖, etc. Also, McDonald's could still show that their color scheme menu and Supersizing concept have acquired a secondary meaning, and would be protected. B. The Green Arch & Clown These identifying marks would clearly be distinctive of McDonald‘s and would also have obtained a secondary meaning. O‘Learys might want to try a giant green ―O‖ and a leprechaun instead. C. The restaurant design and layout Under §43(a) nonfunctional trade dress is protected as long as it is distinctive. If most McDonald‘s restaurants have the same layout, and O‘Learys copies that layout, then there would be a basis for unfair competition even without a showing of secondary meaning. However, if O‘Learys is just copying one layout, that is not typical of any McDonald‘s pattern then their would be less of a likelihood of unfair competition. D. Bad Faith It appears that O‘Learys is operating in bad faith, since their whole plan is to copy and rip-off McDonald‘s. The court could take this into consideration in their ruling. Geoffrey Piper 28 Sep 03 10:58 PM MST The client is asking about the relationship between their instant case and Two Pesos, Inc. vs. Taco Cabana, Inc. In Two Pesos, an identifying mark is distinctive and capable of being protected if it either (1) inherently distinctive or (2) has acquired distinctiveness through secondary meaning. The Supreme Court affirmed a ruling of both of the lower courts holding that secondary meaning is not required to prevail on a claim under section 43(a) of the Lanham Act where the trade dress at issue is inherently distinctive. The court essentially found that there is no reason to apply to trade dress a general requirement of secondary meaning. O‘Leary needs to show that their mark is inherently distinctive in order to proceed with their business model and setting up the franchises. The analysis turns on a discussion of inherent distinctiveness not secondary meaning. <b>Trade Dress and Inherent Distinctiveness</b> In order to be a registered mark, the mark must be capable of distinguishing the applicant‘s goods from those of others. The classic categories in order of increasing distinctiveness include (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, and (5) fanciful. Marks which are merely descriptive of a product are not inherently distinctive. In the instant case, O‘Leary seeks a registered mark based upon elements of their trade dress. Trade dress is defined as the total image or the overall appearance of the business. According to the Blue Bell case, trade dress may include such features as size, shape, color, color combinations, texture, graphics, or even particular trade techniques. The jury found in Two Pesos that Taco Cabana had a non-functional, inherently distinctive trade dress which was had not acquired a secondary meaning but caused a likelihood of confusion in the marketplace. O‘Leary‘s trade dress includes minimal innovative components and components lifted from a competitor McDonalds. The innovative components include a green and yellow color scheme and the ―Green Arches‖ slightly different than McDonald‘s red and yellow color scheme and their ―Golden Arches.‖ Moreover, other lifted components include menu layout, super sizing, the Arch concept in general, layout of restaurants, clown character for marketing. In the instant case, should McDonald‘s sue O‘Leary McDonalds has the burden of proof to prove the mark is not functional. The elements of trade dress for O‘Leary are so similar that they do not seem to be innovative or new. They are copies of McDonald‘s trade dress with only slight changes. <b>Conclusion</b> O‘Leary may have a problem with their business model and trade dress should they continue as is. O‘Leary‘s mark is not inherently distinctive. It will be difficult for O‘Leary to show that the choice of trade dress and business model will not lead to confusion within the marketplace because it is so similar to McDonalds. McDonalds most likely will prevail in the case. O‘Leary needs to change considerable elements of its business model, colors, not use the Arches perhaps etc…With significant changes in the business model and attention to color scheme O‘Leary can avoid confusion with competitors products and insure its own distinctive mark. Gerald Prettyman 27 Sep 03 10:25 AM MST Issues A) Whether McDonald‘s trade dress is protectable. B) Whether O‘Learys would infringe McDonald‘s trade dress. C) Would O‘Learys injure McDonald‘s? D) What remedies are available to McDonald‘s? E) What options are available to O‘Leary‘s? Analysis A) Protectable? Trade dress of a product is its total image and overall appearance. Trade dress is protectable if the appearance is (1) suggestive, arbitrary, or fanciful but not functional, and (2) is inherently distinctive of the intrinsic nature, and (3) serves to identify the particular source of the product. Trade dress is not protectable if the appearance is generic or descriptive, and thus not inherently distinctive of the intrinsic nature or does not serve to identify the particular source of the product. [15 USC 1127, Two Pesos] A design is legally functional, and un-protectable, if it is one of a limited number of equally efficient options available to competitors, and free competition would be unduly hindered by the design trademark protection. [Two Pesos] Secondary meaning indicates a mark or dress ―has come through use to be uniquely associated with a specific source.‖ A manufacturer must show that, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself. [Two Pesos] Is McDonald‘s trade dress protectable? In any comparison of trade dress, the total image and appearance of the company must be taken as a whole. Infringement of trade dress occurs when the alleged infringement creates a likelihood of confusion on the part of ordinary customers as to the source or association of the restaurant's goods or services. [Two Pesos.] Under these rules, McDonald‘s trade dress is protectable if the appearance is suggestive, arbitrary, or fanciful, and is not functional. The color scheme, layout, and design must be inherently distinctive of the intrinsic nature of the business and serve to identify McDonald‘s are the source of their product. McDonald‘s uses a characteristic two-tone red and yellow theme with specified layout of table and chair units, condiment counters and placement of virtually everything within the restaurant so that each McDonald‘s restaurant is similar to every other McDonald‘s. A McDonald‘s restaurant is highly distinctive. The color scheme is not functional, and serves to identify McDonald‘s as the source of its products. Thus, these features of McDonald‘s are protectable as trade dress. B) Would O‘Leary‘s infringe McDonald‘s trade dress? Infringement of trade dress occurs when the alleged infringement creates a likelihood of confusion on the part of ordinary customers as to the source or association of the restaurant's goods or services. [Two Pesos] O‘Leary would not want to invoke a federal remedy for McDonald‘s by using a McDonald‘s layout and create either "a false designation of origin" or a "false description or representation" in connection with the food or service. [Lanham Act §43(a)] McDonald‘s would likely allege that O‘Leary‘s has infringed their trade dress by being very similar because of (1) the layout and design of the restaurant in combination with (2) the two-tone color scheme and sharing the yellow color, (3) the arches, and (4) the clown. (1) The names of O‘Leary and McDonald‘s are dissimilar. ―O‘Leary‖ itself is a name in use by many other restaurants. No infringement here. (2) O‘Leary plans to copy the layout and design of McDonald's restaurants. Comparing the McDonald‘s theme of red and yellow, a green and yellow color scheme is not dispositive of copying. Any analysis includes not only the colors used, but the placement of the colors as well. O‘Leary appears to want to model his restaurant identically to a McDonald‘s right down to the placement of the service counters, tables, chairs, wall trim, size and placement of floor tiles, and perhaps even restrooms. His restaurant would essentially look like a McDonald‘s except their red would be his green but the yellows would be same. A customer walking into an O‘Leary‘s might assume they had walked into a McDonald‘s with strange lighting. This would be confusing. O‘Leary is clearly treading on trade dress here. (3) O‘Leary plans to copy their menu items. Assuming that O‘Leary does not infringe the menu trademarks (Big Mac, etc.) themselves, the fare at fast food restaurants is fairly similar. Fast food is generically fast food, except for the names. The hanging menus at most fast food restaurants are even similar, but placement decisions of the items themselves are based on a company‘s marketing plan. A questionable practice would be the food packaging. Plain paper is not distinctive, but O‘Leary may not copy any marks or names. Unless O‘Leary has ‗inside knowledge‘ of McDonald‘s marketing plans, or infringes trademarks, that he copies the McDonald‘s menu is not definitive proof of trade dress infringement. (4) O‘Leary plans to copy their well-known concepts as Golden Arches (in this case, "Green Arches"). ―Golden Arches‖ is trademarked by McDonald‘s, as was ―GOLDEN ARCHES GREENS.‖ A manufacturer of agricultural equipment had trademarked ―GREEN ARCH.‖ As the Golden Arch of McDonald‘s is a stylized ―M,‖ O‘Leary is clearly treading on trade dress here. (5) O‘Leary plans to copy "Supersizing" of orders. The term ‗supersize‘ is not a trademark, as it is fairly descriptive, and generic in fast food use. O‘Leary can therefore use the term ‗supersize.‘ (6) The O'Leary Company wants to use an Ollie O'Leary clown character akin to the Ronald McDonald clown character, to help with publicity. Clowns are generally known only by their costume and their clown name, neither of which is generic or descriptive. A clown is not always a speaking role, and a clown‘s success is as much by his or silent visual appeal as by things spoken. Thus copying of either name or costume is trade dress infringement. Though Ronald McDonald and Ollie O‘Leary have each taken the last name of their company, Ollie O‘Leary is distinct from Ronald McDonald. Any trade dress infringement rests on the outfit that Ollie O‘Leary wears. If Ollie O‘Leary were the ‗spitting‘ image of Ronald McDonald, an action in trade dress infringement of the clown would be imminent. C) Injury – insignificant? Whether O‘Leary‘s would actually injure McDonald‘s economically is a matter for conjecture. McDonald‘s would argue that customer confusion from O‘Leary‘s would hurt McDonald‘s goodwill. Given the enormous volume of McDonald‘s sales, any volume loss to O‘Leary‘s would not statistically show on McDonald‘s books. D) Remedies – injunction, damages, & costs A plaintiff may recover for a violation of rights of profits, damages, and costs including attorney fees, [15 USC §1117] and the costs of destruction of the defendant‘s product [15 USC §1118]. McDonald‘s would pursue, and very likely secure an injunction barring O‘Leary‘s from using a two-tone color scheme in a design and layout identical to McDonald‘s. Even though any economic injury O‘Leary‘s could cause to McDonald‘s would be insignificant in an accounting, the similarity and willful intent of O‘Learys to copy McDonald‘s is indicative of trade dress infringement, so O‘Leary would be hit with damages and costs, plus having to pay to repair any structure he built that infringed McDonald‘s trade dress. E) O'Leary Options – off-side kick McDonald‘s is a litigation bully – any aura of infringement and they $ue. While colors and food are generic, consistence use of layouts is distinctive. O‘Leary‘s can have their fast food restaurant with hamburgers, cheeseburgers, fish sandwiches, salads, and supersized fries. What O‘Leary‘s cannot have is a layout identical to McDonald‘s. A two- tone scheme is not by itself trade dress infringement, but inclusion of a third color (e.g., black or white) and a use of solid colors where McDonald‘s uses two-tone, and vice versa, is highly recommended. Instead of using a McDonald‘s style of table and chair, use a different one. Don‘t copy the clown, and change the food packaging!! Jana Rubenstein 28 Sep 03 11:36 PM MST Federal Unfair Competition WHAT PROBLEMS? The Two Pesos v. Taco Cabana case defines trade dress as ―the total image of a business‖ including such aspects as ―the shape and general appearance of the exterior of the restaurant, the identifying sign, the interior kitchen floor plan, the décor, the menu…and other factors reflecting on the total image of the restaurant.‖ To obtain federal protection under §43 of the Lanham Act, a company‘s trade dress needs to be non-functional, and inherently distinctive or have a secondary meaning attached. All courts in the Taco case ruled that Taco Cabana‘s trade dress was non-functional and inherently distinctive, thereby qualifying for federal trade dress protection. O‘Leary faces the same problem that Two Pesos faced in the Taco case—the appropriation of another company‘s trade dress. O‘Leary runs the risk of infringing on McDonalds‘ trade dress if it uses such aspects of McDonalds overall image as the layout and design of McDonalds restaurants, menu items, Golden Arches, ―supersizing,‖ and a clown character. McDonalds does not need to prove that one or all of its features has acquired a secondary meaning to be federally protected. McDonalds need only show that its overall image is non-functional and distinctive, and identifies McDonalds as the product‘s source. It seems that McDonalds would have no trouble showing that its image is inherently distinctive. The combination of its color scheme, items on its menu, and consistent restaurant layouts throughout the nation scream ―McDonalds,‖ clearly identifying McDonalds as the source of the restaurant‘s products. If O‘Leary decides to create its image with McDonalds‘ trade dress in mind, the 1988 amendments to the Lanham Act makes damages, profits, attorney‘s fees, costs and destruction of infringing goods available to McDonalds if it prevails in an action under §43(a). WHAT ADVICE? O‘Leary could keep its name (which sounds nothing like ―McDonalds‖) and its green and yellow color scheme. In fact, if it wanted to, O‘Leary could probably get away with using red and yellow, McDonalds colors, for colors are not protected by the Lanham Act. Ollie O‘Leary the clown could stay too, assuming he is not dressed too similarly to Ronald McDonald, as McDonalds does not own exclusive rights to all clowns. However, it seems safer to bag the clown and avoid using arches—something that customers clearly associate with McDonalds. Also, O‘Leary should probably change up its restaurant layout. If O‘Leary wants to sell burgers, fries, and shakes, this is fine—it should just come up with an original ―look and feel‖ to avoid lawsuits with McDonalds. Dominik Schieweck 28 Sep 03 1:08 PM MST Our client plans to open up a fast food-chain with a similar concept as McDonalds. The name O‘Learys itself is distinctive enough and not similar to McDonalds, there is no trademark infringement here. The question is whether McDonalds has a protectable trade dress (total image of the business) that is infringed by our client and what remedies are available to McDonalds. 1. Protectable trade dress: Even though the trade dress is not covered by the text of § 43(a) of the Lanham act, it is nowadays undisputed, that a unregistered trademark or trade dress is protected, if it is non-functional; and either is inherently distinctive or has acquired distinctiveness through secondary meaning. Liability under § 43(a) requires proof of the likelihood of confusion. (Two Pesos case – Discussion here is more about the question whether secondary meaning is required in every case to be protected under § 43(a)). A trade dress of a product is essentially its total image and overall appearance and may include features such as size, shape, colour or colour combinations, texture, graphics or even particular sales techniques (Two Pesos). McDonalds chain has surely a very distinct overall appearance, every restaurant looks about the same with features as colours, the arch logo, similar layout, menus a.s.o. The Ronald McDonald clown serves as a well know figure to represent the chain in the spot as well as in ads. This appearance is non-functional and even if it has not acquired a secondary meaning, it is surely inherently distinctive enough to be protected. 2. Trade dress infringement: Liability for trade dress infringement requires the proof of the likelihood of confusion. McDonalds would have to bring in evidence (i.e. surveys) to show an actual confusion among common customers. Because the concept of our client is more or less copied from McDonalds (arches, clown, layout, menus, a.s.o) it is very likely, that consumers will be confused and maybe see the O‘Leary restaurants somehow related to McDonalds. This is obviously what our client tries to attempt with it – such an intentional and deliberate infringement of a trade dress would raise the damage awards of the plaintiff. 3. Remedies: McDonalds would probably succeed with an action because of trade dress infringement under § 43(a) of the Lanham Act. Therefore, they could claim injunction relief, damages, profits, attorney‘s fees, costs and destruction of infringing goods. If McDonalds succeeds in showing and intentional and deliberate infringement, it is very likely that they can recover damages (if provable) and recover attorney‘s fees besides an injunction. Our client should think about changing the concept of his fast-food chain into his own and less obvious ―stolen‖ one. Amy Schloemann 28 Sep 03 2:27 PM MST Two Pesos v. Taco Cabana Holding The holding in this case was that secondary meaning was not required to prevail on a claim under 43a of the Lanham Act where trade dress at issue is inherently distinctive. This holding could be a problem for O'Leary Food company. The court found these elements applicable when finding that Taco Cabana had a trade dress. 1. the trade dress is non-functional, 2 it is inherently distinctive. 3. it has not acquired secondary meaning and 4. there is a likelihood of confusion. Functional trade dress for the fast food business must be related to the food, menus, the way that they offer meals and not the decor. So, McDonald's golden arches, McDonald's mascot, layout of the restaurant, and color scheme can all be protected because they are a non functional element of their business. The McDonald's non-functional trade dress is not descriptive or generic but rather it can be classified as fanciful. Therefore if it is not descriptive but rather distinctive then it can also be protected under the Act. As to whether there is a likelihood of confusion, that is almost certain. McDonald's is a national food chain in addition to being a house-hold name. If O'Leary were to go ahead with their plans of mimicking McDonald's decor and such it would confuse the public as to where O'learys fast food originated from. Secondary meaning is not an issue here because the only place that secondary meaning appears in the statute also requires that it apply to merely descriptive marks and not to inherently distinctive ones. And we already determined that McDonald's decor would likely be classified as distinctive marks. In conclusion, the advise to O'Leary Food company would be that the copying of McDonald's protected trade dress such as their color scheme, golden arches concept, and Ronald clown character would be actionable under the Lanham Act and I would advise another decor idea. Christina Sobral 27 Sep 03 6:53 PM MST I. Trade Dress Problems A. A trade dress is the total image of the business. 1. The trade dress of a restaurant may be protected under § 43 (a) of the Lanham act if there is a finding of inherent distinctiveness. a. The court would find that McDonalds Trade dress is inherently distinctive, and probably even has secondary meaning (in that the mark or dress that has come through the use to be uniquely associated with a specific source) i. Most people have patronized McDonalds, and if not they have at least seen a McDonalds in their hometown or a town nearby. ii. All McDonald‘s restaurants have the same uniform design and have the same menu and promotions, regardless of their location. B. The court held in Taco Cabana‘s trade dress included the shape and general appearance of the exterior of the restaurant, the identifying sign, the interior kitchen floor plan, the décor, the menu, the equipment used to serve the food, the servers uniforms and other features reflecting the total image of the restaurant. 1. O‘Leary‘s current plan for their restaurant more then likely will infringe on McDonalds already inherently distinctive restaurant. a. The proposed design plan at O‘Leary‘s is based on the same layout and the basic design of McDonalds. b. O‘Leary‘s plans to copy McDonald‘s menu, and concepts that McDonalds has developed through their marketing and popularity with the public. i. McDonalds could easily make the argument, and convince any trier-of-fact, that their concepts are not only inherently distinctive, but have acquired secondary meaning. a) ―Golden Arches‖ and ―Supersizing‖ c. O‘Leary‘s even plans to have a clown character that represents their restaurant, which is essentially the same clown character as McDonalds, except that O‘Leary‘s clown would have another name. II. Advice A. My advice is to come up with different design scheme and concepts for their restaurant to avoid damages. 1. Damages for infringing section 43 (a) of the Lanham Act include damages, profits, attorney fees, cost of destruction of the infringing products to the prevailing plaintiff. a. Even if it is found that McDonalds trade dress is unregistered (which is highly unlikely). Congress, in the 1988 Amendments to the Lanham Act, extended the remedial provisions providing damages from registered marks to marks that are inherently distinctive, as well. Faye Tillery 28 Sep 03 1:07 PM MST An identifying mark is distinctive and capable of being protected it it is inherently distinctive or has acquired distinctiveness through secondary meaning. (Two Pesos) The color scheme, layout and design of McDonald's resturants, their menu items, the golden arches and supersizing of orders, and the Ronald McDonald clown character is inherently distinctive and make consumers aware of the the souce and quality of the fast- food hambuger restaurants. Eligibility for protection depends on nonfunctionality, and requires proof of likelihood of confusion. There is only one chain of fast-food hambuger restaurants that use these distinguishing characteristics. If another food chain opened using the same distinctive trade dress customers would be confused as to the source of the fast-food hambuger restaurants. Consumers may eat in an O'Learys believing that they have the same source instead of eating at a McDonalds that is maybe a longer distance from the location of O'Learys and the McDonalds would lose business, which would result in unfair competiton because of confusion of source. Protection of trade dress serves to secure the owner of the mark the goodwill of his business and to protect the ability of consumers to distinguish among competing producers. The distinctive features of McDonald's restaurants serve to distinguish its food items from food items from another source. They have build a strong reputation, and its designs are not descriptive nor are they merely functional. Therefore O'Leary's would be enjoined from using McDonald's as a model for their restaurants. It would cause unfair competiton, and it would be against the intended purpose of th Lanham Act, which is to make actionable the deceptive and misleading use of marks and to protect persons engaged in commerce against unfair competition. If O'Learys were to use McDonalds distincitive marks it would be found to be infringing McDonalds trade dress and would be subject to damages for such an infringement. My advice to O'Learys would be to come up with their own trade dress distinctive from the trade dress of others to avoid liability for infringement. Sarah Truong 28 Sep 03 2:02 PM MST I. Problems: A. Is McDonald's trade dress protected? 1. Lanham Act: ¤43(a) of the Trademark Act of 1946 (Lanham Act) has been interpreted by a majority of courts to protect trade dress. Protection of trade dress, no less than of trademarks, serves the Act's purpose to "secure to the owner of the mark the goodwill of his business and to protect the ability of consumers to distinguish among competing producers." 2. Decision from Two Pesos: Trade dress is protected if it: a. is either inherently distinctive OR has acquired distinctiveness through secondary meaning, AND b. nonfunctional, AND c. there is proof of the likelihood of confusion. 3. Analysis under Two Pesos: a. Is McDonalds' trade dress inherently distinctive? The different levels used to determine whether a mark is inherently distinctive are whether the mark is generic, descriptive, suggestive, arbitrary, fanciful, or functional. Generic, descriptive, and functional symbols are not protected (unless they have acquired a secondary meaning). Suggestive, arbitrary, and fanciful symbols are protected. The "golden arches" are not descriptive of McDonalds products, but rather fanciful. The clown, Ronald McDonald, is a fanciful symbol of McDonalds. The color scheme is another method McDonalds uses to distinguish the source os its products from those of competitors. Therefore, the golden arches, the clown, and the color scheme are protected. "Supersizing," however, is merely descriptive. Other restaurants (like Burger King) use "supersizing." The menu items are functional and other restaurants have similar items on their menus. b. A design is legally functional, and thus unprotectable, if it is one of a limited number of equally efficient options available to competitors and free competition would be unduly hindered by according the design trademark protection. (5th Circuit). The red and golden color scheme, Ronald McDonald, and the "golden arches" are not functional. Protecting these symbols would not hinder free competition. However, the menu-items are functional in that other restaurants (like Wendy's) also have a "99¢ menu" and "kid's meals." Each restaurant also has its own "burger" (Big Mac, Whopper). Protecting menu items would hinder free competition. c. Will consumers be confused? ¤ 43(a) may be invoked when the infringement falls under "false designation of origin" or "false description or representation." The ultimate test is whether the public is likely to be deceived or confused by the similarity of the marks. Consumers here be confused as to whether the source of O'Learys products is McDonalds. No other restaurant has a trade dress that comes even close to being similar to McDonalds'. 4. The last problem that O'Learys faces if they copy McDonalds' trade dress is that McDonalds can get profits, damages, attorney's fees, and costs and destruction of infringing goods as remedies in a law suit. II. Steps to avoid problems: O'Learys may use supersizing and may have a restaurant selling burgers, fries, shakes, etc. However, everything else about their layout and design must change. For the color scheme, O'Learys can use three or four different colors instead of just two (but don't use a combination that includes both red and yellow). The clown and the arches must go. Maybe use a leprechaun and a four-leaf clover as symbols (if O'Learys is Irish and no other restaurants use those symbols). Stephanie Profitt 29 Sep 03 12:18 AM MST IP Problem #6, Unfair Competition The Mexican food case you are referring to is Two Pesos v. Taco Cabana. This is a 1992 Supreme Court case where Taco Cabana sued Two Pesos for unfair competition. Taco Cabana‘s claim was based on the fact that Two Pesos adopted a ―trade dress‖ for their restaurants that was very similar to Taco Cabana‘s. Two Pesos argued that since Taco Cabana‘s ―trade dress‖ had not acquired a secondary meaning in its market, it could not prove a claim of unfair competition. Trade dress is the total image of a business. The district court defined Taco Cabana‘s trade dress to include the shape and general appearance of the exterior of the restaurant, the identifying sign, the interior kitchen floor plan, the décor, the menu, the equipment used to serve food, the servers‘ uniforms and other features reflecting on the total image of the restaurant. In the Two Pesos case, the Supreme Court held trade dress that is inherently distinctive is protectable under § 43(a) of the Lanham Act without a showing that it has acquired secondary meaning. Accordingly, Taco Cabana prevailed on its unfair competition claim. In reaching this holding, the Court reasoned that the purpose of the Lanham Act is to ―secure to the owner of the mark the goodwill of his business and to protect the ability of consumers to distinguish among competing producers.‖ Because of this, the heart of the issue is whether the public is likely to be deceived or confused by the similarity of the marks. Accordingly, it found that due to Two Pesos‘ similarity to Taco Cabana, people public might be confused by the two restaurants. Applying these principles to your situation, it seems likely that by adopting the layout and design of McDonald's restaurants, their menu items, an ―Arches‖ sign, the concept of "supersizing" orders, and a mascot similar to McDonald‘s, you, like Two Pesos, could be found liable in an unfair competition suit. Even if you were to try to locate your restaurants in an area that does not have a McDonald‘s (if one exists), it seems you would still potentially be liable. In the Two Pesos case, for instance, Two Pesos opened its restaurants in Houston before Taco Cabana did, but since Taco Cabana had assumed its trade dress before Two Pesos, the Court held in favor of Taco Cabana. For these reasons, I would suggest that you select another theme for your restaurants. Suman Mathews 29 Sep 03 12:59 AM MST In the Taco Cabana case, the Ct. determine that trade dress which is inherently distinctive is protectable under the Lanham Act without a showing that it has acquired secondary meaning. The Ct. stated that an identifying mark is distinctive and capable of being protected if it either 1) is inherently distinctive or 2) has acquired distinctiveness through secondary meaning. Marks that are suggestive, arbitrary, or fanciful are usually deemed inherently distinctive. McDonald‘s will claim that its golden arches and Ronald McDonald clown are distinctive marks that are inherently distinctive and entitled to protection because their intrinsic nature serves to identify a particular source of product. O‘Leary‘s will not likely be able to use its green arches or Ollie O‘Leary if McDonald‘s shows that its marks are inherently distinctive. O‘Leary‘s may be able to use the ―supersizing‖ label of its orders if it can show that this is a generic mark or a mark that is merely descriptive of a product as used by McDonald‘s. However, McDonald‘s will argue that ―supersizing‖ has acquired distinctiveness through secondary meaning, whereby the label has become distinctive of McDonald‘s goods in commerce. McDonald‘s will probably prevail on this issue. O‘Leary‘s will be able to use its green and yellow color scheme since the Ct. held in Wal- Mart that color is not inherently distinctive, but that color could be protected as a trademark upon a showing of secondary meaning. McDonald‘s uses a red and yellow color scheme and would have no claim against O‘Leary‘s for using a comparable color scheme since it involves a different color. Liability under the Lanham Act requires proof of the likelihood of confusion and McDonald‘s will most likely be able to show that O‘Leary‘s use of similar marks will create this confusion so that O‘Leary‘s would be held liable. O‘Leary‘s should not use the green arches or clown but may be able to use the ―supersizing‖ label and their color scheme.