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By Joel I. Rosenblatt, Attorney at Law
Mr. Rosenblatt, a Registered Patent Attorney with the U.S. Patent and Trademark Office, practices in the commercial law of technology and the Internet and the law of patents, trademarks, and copyrights. He is a Florida Supreme Court Certified Mediator, a Florida Bar Approved Mediator for Computer Law Disputes, certified as a Mediator and Arbitrator for the U.S. District Court for the Middle District of Florida and is admitted to all U.S. District Courts for Florida. Any questions or comments may be directed to Mr. Rosenblatt at (321) 727-7626; FAX: 727-8209 or by email to jirosenblatt@earthlink.net
TRIFECTA
It’s not often I can write about utility patents, design patents, copyrights, registered trademarks and common law trademarks, as well as the law of unfair competition, all at one time and with the same set of facts. But this month, I got lucky thanks to a recent case involving a trademark, of a kind known as tradedress, stretched beyond the limited right in the mark itself, by an attempt to stop the sale of a product sold as one and the same as the mark, itself.
A point of orientation to be retained in the reading of this article directed to “tradedress,” is the two exclusive concepts in intellectual property of a) functionality and b) appearance and ornamentation, and unlike “love and marriage,” as the Sinatra song says, “you can’t have one without the other,” in intellectual property, you can’t have one with the other. As we shall show, functionality, for the best of reasons, nullifies any value in appearance as constituting trade dress.
As it happens, a central intellectual property issue in “trade dress,” a fairly recent concept in the trademark law, asks if the appearance of a product has acquired a secondary meaning in the market place as indicating the source of the product. For a frame of reference, imagine going to the local discount mart, looking for a drug marketed under the trademark Advil and which may have a distinctive color pattern and design, on the container. You select a product without seeing the name but with the same or similar distinctive color pattern and design, thinking that it is the Advil product and later, upon closer inspection, see it is not Advil but a competitor’s product whose container has been made to look like the Advil container.
You were deceived by tradedress which is limited to the incidental, arbitrary, or ornamental, features constituting a product’s appearance. However, to be protect able, it must be shown the trade dress has attained a secondary meaning in the marketplace, which means the consumers have come to identify the trade dress appearance on the container with a single source of origin for the product. That is attorney shorthand for a recognition by the relevant consumers that the quality of a product within a container which has the same tradedress appearance of the Advil container, will be of the same quality the consumer has come to expect from Advil. Protectable tradedress may be proven by consumer surveys, if approved by the court, and by advertising expenditures as circumstantial evidence, the trade dress has established a secondary meaning in the minds of the relevant consumers as indicating a single source of origin.
Connected to, and comparable with, the incidental, arbitrary, or ornamental, product features constituting tradedress, is the design patent requirements of visual ornamental characteristics embodied in, or applied to, an article of manufacture. Tradedress as a protectable trademark can never be used to protect functional features, even where there is a choice of functional features to choose from. Like tradedress protection, a design patent protects only the appearance of the article and not structural or utilitarian features.
Now to complete the triangle, a word about copyright, which protects the design of a useful article which makes the article attractive or distinctive in appearance to the purchasing or using public. It does sound like a design patent or what was explained above as “protectable tradedress.” However, there are distinctions with differences, as will be explained.
To finish the topic, there is a utility patent for any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, and copyright for original works of authorship fixed in any tangible medium of expression. Works of authorship include (1) literary works; (2) musical works, including any accompanying words; (3) dramatic works, including any accompanying music; (4) pantomimes and choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and other audiovisual works; (7) sound recordings; and (8) architectural works.
As this is an essay of comparison for the purpose of “cause and effect,” on the limited subject of tradedress, it is important to reemphasize definitions and in particular the definition of “functionality,’ as a cause and effect on tradedress.
As a starting point, a utility patent, design patent, copyright, copyrightable design, a trademark embodying a design and a tradedress as a protectable trademark, are all defined by visual features attached to the work or article of manufacture or to the goods or the containers for the goods. As a next step in our inquiry, the question is asked as to the cause for protection; is it a) the incidental, arbitrary, ornamentation, or the attractive and distinctive design or the expression of an original work of authorship, which is sought to be protected, on the one hand, or b) on the other hand, is it the functions of the elements or steps of a process, machine, article as opposed to the appearance of the elements, whatever they may be, and which happen to exist side by side with that appearance.
It can be a confusing concept, but fortunately, we are not without our friends in the U.S. Congress and on the Supreme Court, who provide some directions in the case of the former and insights in the case of the latter. The Lanham Act, known as the trademark law, protects rights in non-registered trademarks. One kind of non-registered trademark is tradedress, which starts its life as the appearance or ornamentation of the goods or the containers for the goods and becomes a protectable non-registered mark when it acquires secondary meaning as a trademark in the minds of the consumers in the relevant market. That’s a mouthful but what it means is that when you reached for the container thinking it was Advil because of its color patterns, it signified that color pattern acquired secondary meaning as a tradedress protectable mark.
However, as we said above, the exclusive concepts of functionality and appearance cannot exist together and we know this to be true because our trademark law says that the proponent of a tradedress mark has the burden of proving it is not functional and the Supreme Court has said that a patent application describing the tradedress elements as functional, shall prevent the trade dress proponent from carrying that burden of proof.
So where does that leave us? First, be careful to separate the requirements for any intellectual property right sought and make sure the assertion of one does not affect the other. As we have seen, tradedress protection for a nonregistered trademark cannot exist with a patent claiming as a functioning invention, those same features claimed for the distinctive appearance of the tradedress. Second, read the comparable law and know, for example, when a design copyright will be terminated by a design patent and choose your protections accordingly. And third, do not overextend your available protections. It asserting tradedress, limit its enforcement to the appearance of the product and not to the product itself.
If you’re wondering, there was a case involving the color of pills asserted as trade dress and which the Circuit Court found functional as a designator of the type of drug contained within the colored coating. Be careful when reaching for that container. It might not have passed review by our distinguished appeals court justices.
Stay Tuned for Next Month's Article!
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Joel I. Rosenblatt is state Supreme Court certified and available for mediation and arbitration. He practices as a registered patent attorney in patents, trademarks and copyrights. Specific areas of practice include commercial law related to electronics, computers, data processing, telecommunications, materials and mechanical engineering, the Internet and entertainment and in the development and licensing of technology and creative works. As Intellectual Property and Licensing Counsel for Fortune 200 corporations, he has acquired numerous patents for electronics and computer related inventions, and has prepared and negotiated design, development and distribution agreements for software, telecommunications, electronic technology, and creative works. As a logistics attorney, he has provided counsel and representation in the field of customs, logistics services, and in loss and damage claims.
Mr. Rosenblatt is available for mediation and arbitration in the fields of general law, intellectual property, entertainment, and technology law, and in logistics law and loss and damage claims. Emphasizing technology and the arts, he serves a wide range of intellectual property and commercial needs for individual and business clients. Mr. Rosenblatt, as a senior level attorney can provide clients easy access and quick turnaround.
Education and Professional Affiliations:
Mr. Rosenblatt holds a Bachelor of Electrical Engineering Degree from the New York Polytechnic University, an MBA from the Wharton School of the University of Pennsylvania, and a JD from the Catholic University of America Law School.
Mr. Rosenblatt is a Registered Patent Attorney with the U.S. Patent and Trademark Office and a member of the Florida and New York State Bars. Admitted to practice in the Court of Appeals for the Federal Circuit, the United States Court of Appeals for the 11th Circuit, the United States Court of International Trade and the United States District Courts for the Northern, Southern, and Middle Districts of Florida. Florida Supreme Court Certified for Circuit Court Mediation and approved by the Florida Bar as a Mediator of Computer Law Disputes. Mr. Rosenblatt has completed Florida Supreme Court Certified Arbitration Training and is certified as a Mediator and Arbitrator in the United States District Court for the Middle District of Florida. jirosenblatt@earthlink.net . |
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