Intellectual Property Law - Research Paper Example

?RUNNING HEAD: INTELLECTUAL PROPERTY LAW - FINAL PAPER Intellectual Property Law: Final Paper Q1 In tracing the history of US SC decisions on trademark protection, particularly trade dress protection, two previous SC decisions prior to its decision in the case of Wal-Mart v Stores Inc. v Samara Bros. Inc., 529 US 205 (2000) are important. These two cases are Qualitex Co v Jacobson Products Co., Inc., 514 US 159 and Two Pesos, Inc. v Taco Cabana, Inc. 505 US 763. The term “trade dress” refers to the non-functional aspect of a product usually found in its packaging or the design of the product itself. It includes features such as shape, size, color, textures, designs and the manner by which words are arranged on the product (Holbrook & Harris pp. 223-224). Trade dress is either of the two types: product packaging, or; product design (Ferretti 2002 p. 423). In Two Pesos, the trade dress in contention was the “look and feel” that Taco Cabana, a successful chain of Mexican restaurants, had established over the years and which was allegedly copied by Two Pesos, a Mexican restaurant chain owned by a person who once approached the owners of Taco Cabana offering to take the restaurant’s concept nationwide, but was rejected. The “look and feel” allegedly copied includes the 24-hour patio cafe concept, building and other features architecture, open kitchens and menu boards, among others. Taco Cabana brought an action for trade dress infringement and was granted relief by the trial court, a decision upheld by the Court of Appeals. On appeal, the SC harmonize the requirements between registered and unregistered marks stating that the requirements for the registrability of trademarks are also the same requirements in determining whether unregistered marks are entitled to protection. More significantly, the SC ruled that acquisition of secondary meaning of a trade dress is not necessary in cases where the trade dress is inherently distinctive. Accordingly, the Court ruled that it is inappropriate to impose upon inherently distinctive trade dress the requirement of secondary meaning on the following grounds: there is no rationale for enforcing additional requirements on trade dress because protection for both trademark and trade dress under the Lanham Act serves the same purpose of preventing both unfair competition and fraudulence; the provision on trade dress in the Lanham Act, viz. s 43(a), does not justify a departure from traditional and established trademark test, and; imposing upon a trade dress the additional requirement of secondary meaning even if the trade dress is found to be inherently distinctive is contrary to the underlying objective of the Lanham Law which is the protection of both consumers and trademark holders. In Qualitex, the trade dress in issue was the green-gold color, which was plaintiff Qualitex’s color of its dry cleaning pads, a product it had been selling for more than thirty years. The defendant company began manufacturing and selling dry cleaning pads with the same color as that of Qualitex, a move that prompted the latter to bring an action for unfair competition against Jacobson before the courts and subsequently added trademark infringement after it successfully registered its dry pad color with the Patent and Trademark Office during the pendency of the case. The trial court decided in favor of Qualitex; the Court of Appeal reversed that decision on the ground that color per se is not registrable as trademark. This decision was not upheld by the SC on the ground that trademark is a broad term that comprises anything capable of giving meaning, according to the s 1127 of the USC Code, such as color. Section 45 of the Lanham Act requires the elements of ability to identify and distinctiveness as to the source of goods as requirements to registrability. Although color is not inherently distinctive, the SC asserted that it could acquire secondary meaning from frequent use over a long period of time that such color could represent, in the public mind, the identity of the source of the product rather than the product itself. The Qualitex decision was largely underpinned by the Trademark law principles of protecting the consumers, by preventing confusion, and protecting manufacturers, by preventing its established good will from being traded off. Moreover, the Court also delved into the question of the functionality doctrine as applied to color and held that this cannot serve to bar color from being considered a trademark because color does not always serve as an important role in the desirability of the product. Q2 Yes, in both the aforecited cases, the provisions of the Lanham Act significantly played a vital role in the decisions of the SC. In particular, are the provisions under s 43(a) on civil actions under the broad heading of “false designations of origin, false descriptions and dilution forbidden” where conditions for liability are established, the entities liable and unregistered trade dress infringement. Q3 The case of Wal-Mart Stores Inc. v Samara Bros. Inc., 529 US 205 (2000), is a trademark infringement case brought under a writ of certiorari in the Court of Appeals from a District Court decision. The issue in this case was whether or not knock-offs of original clothing design constitutes an infringement of an unregistered trade dress under s 43(a)(1) of the Lanham Act because it is “likely to cause confusion, or to cause mistake, or to deceive as to the … origin, sponsorship or the approval of his or her goods…” The SC held that Samara needs to prove that its trade dress design has acquired distinctiveness in the public’s mind so that such design has acquired secondary meaning as a source identifier rather than of the product. The conflict in this case originated when Wal-Mart contracted one of its supplier, Judy-Philippine, Inc, or JPI to manufacture for it a children’s clothing line similar to that being sold by Samara Brothers, Inc. The latter subsequently brought an action for infringement against Wal-Mart in the District Court, which awarded it damages. Wal-Mart subsequently appealed the case to the US Supreme Court, which reversed the Court of Appeal decision affirming the decision of the District Court. The mark in contention here is the trade dress of Samara and under the Lanham Act the burden of proof is upon the person claiming protection that the trade dress is not functional and is likely to cause confusion with the product of the claimant. The SC focused its discussion on the distinctiveness of the trade dress as a pre-requisite of protection considering that Samara’s trade dress is unregistered. Thus, it asserts that distinctiveness may be determined in either of the two ways: inherent distinctiveness as exemplified by “Camel” cigarettes, “Kodak” film and “Tide” laundry detergent, and; acquired distinctiveness, a state that a product has reached when it has developed a secondary meaning in the minds of the public after years of use as to the source of the product rather than the good itself. Citing the case of Qualitex Co v Jacobson Products Co., Inc., 514 US 159, the Court illustrated that even color, which is inherently non-distinctive, can be made distinctive after years of use that it has acquired secondary meaning in the public’s mind as being the source of the product rather than the product itself. The SC contends that product design, like color, can never be inherently distinctive and therefore anyone claiming protection for it should prove that it has acquired secondary meaning. Unlike product packaging, for example, public predisposition to take product design as source identifier is highly unlikely. Moreover, to treat it as inherently distinctive is not good for consumers who will then be deprived of the gains derived from aesthetic and utilitarian competition. The SC made a distinction between product design trade dress and product packaging trade dress. In the case of Two Pesos, Inc. v Taco Cabana, Inc. 505 US 763 (1992), which it decided earlier, the Court established that trade dress can be inherently distinctive but that case involved product packaging trade dress and not product design trade dress, unlike the present case. The SC’s decision in this case surprisingly departed from its oft-repeated underlying rationale of the Lanham Act, which it had previously cited in previous cases, viz. protection of consumers from deception and protection of trademark holders from having its goodwill traded off. On the contrary, the SC rationalized its decisions on three reasons that are extraneous to the Lanham Act: non-predisposition of consumers to regard designs as source-identifier; opening the floodgate for anti-competitive suits, and; product design is different from product packaging, which is capable of being inherently distinctive. Q4 The SC holding in the Wal-Mart case is narrow because it identified product design trade dress as particularly not susceptible of being inherently distinctive, without providing any legal or substantial support for this statement. The SC did not even employ any of the already established tests to substantiate this determination. The Abercrombie Test, for example, uses the generic-descriptive-suggestive-arbitrary-or-fanciful questions to determine inherent distinctiveness while the Seabrook Test does this by discovering whether the design has the following features: common; unique or unusual, or; mere refinement of another trade dress or ornamentation (Ferretti 2002 p. 436) The implication of this holding, in the long run, is that commercial entities will be free to copy the designs of other entities because there will be no law barring them from doing so. The market will be glutted with look-alikes and knock-offs and eventually, many will lose the desire and the drive for creativity, not only because they can just easily copy from the designs of others, but also because they would feel the frustration of having their work stolen without the law granting them relief of action against thieves. This would eventually defeat the purpose of the Lanham Act, which is to protect both consumers and trademark holders from confusion and deception. References: Ferretti, Joseph. Product Design Trade Dress Hits the Wall…Mart: Wal-Mart v Samara Brothers. IDEA-The Journal of Law and Technology, Volume 42, No. 3, 2002. Holbrook, Todd & Harris, Alan Nathan. Model Jury Instructions: Copyright, Trademark, and Trade Dress Litigation. American Bar Association, 2008. Lanham (Trademark) Act. Qualitex Co v Jacobson Products Co., Inc., 514 US 159 (1995). Two Pesos, Inc. v Taco Cabana, Inc. 505 US 763 (1992). Wal-Mart Stores Inc. v Samara Bros. Inc., 529 US 205 (2000). Read More