Trademark and Unfair Comp.

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Trademark and Unfair Comp.

• Boston College Law School
• September 9, 2004
• Trade Dress - Part 1

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Trade Dress Product Design
Trade Dress
Product Design
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Trade Dress Protection

• Lanham Act 43(a)
• Any person who shall affix, apply, or use in
  connection with any goods or services a false
  designation of origin , and shall cause such
  goods or services to enter into commerce shall
  be liable to a civil action .

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Two Pesos v. Taco Cabana505 U.S. 763 (1992)
Taco Cabana Trade Dress
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Two Pesos v. Taco Cabana505 U.S. 763 (1992)

• Findings of the District Court
• Taco Cabana has an identifiable trade dress
• The trade dress is non-functional
• The trade dress is inherently distinctive
• The trade dress has not acquired secondary meaning

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Inherently Distinctive?
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Policy Considerations
High
Low
Generic
Descriptive
Inherently Distinctive
Distinctiveness
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Functionality

• Lanham Act 2(e)(5)
• No trademark shall be refused registration
  unless it --
• (e) Consists of a mark which, (5) comprises any
  matter that, as a whole, is functional

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Functionality

• When is something functional?
• Essential to the use or purpose of the article
• Affects the cost or quality of the product
• Exclusive use of the feature would put
  competitors at a significant non-reputation-relate
  d disadvantage

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In Re Morton-Norwich671 F.2d 1332 (C.C.P.A. 1982)
Superior in function or economy of manufacture,
which superiority is determined in light of
competitive necessity to copy

• Evidence of functionality
• Existence of utility patents
• Advertising touting utility
• Existence of alternatives
• Cost to manufacture

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Policy Considerations
High
Low
Functional
Non-Functional
No Protection
Functionality
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Example - Review
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Administrative Details

• Next Assignment
• Finish II.C - Trade Dress