Lipton, Weinberger & Husick

Trademarks provide important intellectual property protection to businesses and to their products. Trademarks identify the source or origin of goods or services. A related sub-concept of trademarks that also provides broad intellectual property protection to a business is the concept of trade dress.

Trade dress protects a product’s unique design, look and feel. It covers the overall image generated by the product or package. Trade dress comprises traits such as shape, package, size, color, color combination, texture, and graphics. In general, trade dress protects the image of a product. For example, a bucket full of chicken is the trade dress for KFC, the sensual shape of a Coca-Cola bottle is the trade dress of the trademark Coca-Cola, a sophisticated blue box is the trade dress of Tiffany, a yellow and red color combination package is the trade dress of Kodak films.

Trade dress protection may also be available for products, packaging, or business forms and stationery for which a design patent, utility patent or copyright protection may not be available after its expiration. If these other types of protection were never obtained, then trade dress rights may nonetheless be available. For example, it is possible to concurrently protect a design with both trade dress rights and a design patent. Also, trade dress protection is available to protect a design after a design patent has expired.

To obtain trade dress protection for product configurations, it is required to show that the design of the product at issue is inherently distinctive, or has acquired secondary meaning. However, trade dress protection cannot be obtained for a product functional in nature if the product is utility patent protected. Furthermore, to obtain protection of a product under trade dress, the concept protected must be non-functional in nature. For example, if a disputed product configuration is part of a claim in a utility patent, and the configuration is descriptive of the inventive concept, then the doctrine of trade dress which is necessarily functional in nature is not available until the patent for that product has expired and has entered the public domain.

In one of the most important trade dress cases to date, the Supreme Court, in Two Pesos, Inc. v. Taco Cabana, Inc.,(505 U.S. 763, 112 S.Ct. 2753 (1992), held protectable the trade dress of Taco Cabana’s restaurant, and described it as “a festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals. The patio includes interior and exterior areas with the interior patio capable of being sealed off from the outside patio by overhead doors; the stepped exterior of the building is a festive and vivid color scheme using top border paint and neon stripes. Bright awnings and umbrellas continue the theme”.

Feel free to drop us a line if you have a product, which may qualify for trade dress protection.

–Ash Tankha, Esq.

You’ve probably heard about the bankruptcy of Eastman Kodak Company.  Yes, everyone sees the irony in a once successful company famous for its technical innovations failing to keep pace with the rapid speed of digital technology.  Should we write off Kodak and leave it to the dry and dusty bins of history — as one of our partners puts it (see below) — or should we await to see what emerges from black box of bankruptcy?  We’ll leave that question to bankruptcy lawyers.  For now, let’s briefly consider the impact of Eastman Kodak upon trademark law.

Intellectual property lawyers are fond of pointing out that the KODAK trademark has assumed almost iconic proportions as the epitome of trademark fame and strength.  One court noted that “The Kodak trademark is perhaps one of the strongest and most distinctive trademarks in this country, if not the world.”  Indeed, KODAK is listed in the leading treatise of trademark law by J. Thomas McCarthy as one of just a handful of fanciful — hence strong — marks joining ranks with the likes of CLOROX, EXXON, and POLAROID.  Did you realize that the fame of the KODAK mark has its roots in the 19th century?

In 1890, Eastman defended its KODAK brand before the Patents Court of the United Kingdom in the case of  Eastman Photographic Materials Company, v. John Griffiths Cycle Corporation, Limited (15 RPC 105).  This was a period when steam was king, the automobile was in its infancy, and wireless telegraphy was high-tech. Yet, the facts of the case have a modern ring. Here’s what happened:

For many years, Eastman had been using the registered trademark “Kodak” to identify their goods, especially cameras.  One of its products was a specialty camera and attachment hardware for bicyclists. The product was advertised by Eastman as “Bicycle Kodaks.” During the same period, Eastman Company owned shares in a limited company called the “Kodak Company, Limited,” which had yet to begin business but showed commitment to its mark.  In the previous year, 1897, the John Griffiths Cycle Corporation (“JG”) applied for and obtained registration of the word “Kodak” as a trademark identifying bicycles and other vehicles.  It also registered a new company called “the Kodak Cycle Company, Limited” and commenced to advertise “Kodak Cycles”.  Although Eastman’s KODAK mark was registered it was not registered to identify bicycles.  Displeased with these developments, Eastman sued JG and the Kodak Cycle Company demanding that they refrain from carrying on business under the name Kodak Cycle Company, passing off their goods as the goods of Eastman, and infringing Eastman’s trademarks.

The court held that KODAK had become identified with Eastman and its goods, and that there was a close connection between the bicycle and photographic trades.  The court further held JG’s registration had been obtained by fraud, that the defendants were trying to get the benefit of the reputation of the Eastman company, and that the trademark must be “expunged” as being calculated to deceive. Finally, of course, the court imposed an injunction on the defendants to stop the infringing conduct.

So, if you didn’t know that there is a close connection between bicycles and cameras, now you do.  Let’s hope that the Eastman Kodak Company can pull itself together and reclaim its lost grandeur.

– Adam G. Garson, Esq.

The owner of the popular Chickie and Pete’s (CP) restaurant chain, Pete Ciarrocchi, is on a tear trying to maintain his monopoly over the use of “crab fries,” a seasoned french fry product, which Philadelphia Magazine claims Ciarrocchi invented.  Not so says a handful of restaurants in the Maryland eastern shore who have orchestrated a grass roots movement to save the crab fry complete with, of course, a Facebook page and blog.  Some lawyers  claim that local use of the term “Maryland Crab Fries” and “Crabby Fries” is not similar to CP’s mark, is not likely to cause confusion outside of CP’s market and CP’s mark is just too generic to deserve registration.  Against this backdrop,  CP is defending its trademark rights and has sued the parent organization of certain Maryland and North Carolina restaurants — New York J & P Pizza — alleging  trademark infringement, unfair competition, trademark dilution and other causes of action.

If you’re a regular reader of our newsletter, you will understand that trademark owners have a legal duty to defend their trademarks.   In the process, however, a trademark owner can lose its rights if the alleged infringer is able to prove in court that the mark is generic or, put another way, lacks distinctiveness.  If every restaurant in Maryland and the eastern seaboard sold “crab fries”, for example, there would be nothing distinctive of CP’s use of the same phrase.  We’re not experts on the use of the “crab fries” mark but typically in these situations, business considerations will prevail over legal right.  CP has  successfully defended its trademark for years by simply threatening to sue alleged infringers.  It’s very expensive to defend a trademark infringement action.  Lawyers must be hired, court costs paid, and someone has to foot the bill for the business disruption and distraction caused by the lawsuit.  If you’re a small business owner, like many of the restaurants in Maryland’s shore areas, its hard to justify the expense and its far easier (and cheaper) to change the menu.  Unless CP’s suit against New York J & P Pizza has a different bottom line equation — and it might — we predict a quick settlement.

– Adam G. Garson, Esq.

Did you know that a trademark may be refused registration because it is deceptive? Yes, indeed, the “deceptively misdescriptive” doctrine is an interesting — if not tongue twisting — principle of trademark law, which occasionally rears its head. Here’s how it works in a real life case. Retail Brand Alliance, Inc. (i.e., Brooks Brothers) sought to register the trademark BLACK FLEECE  for apparel such as belts, blouses, boots, including vests and — this is important –  “not made of fleece fabric.”  The trademark examiner refused registration of mark under section 2(e)(1) of the Trademark Act on grounds that the applicant’s mark is deceptively misdescriptive of its goods.  Brooks Brothers appealed the decision to the Trademark Trial and Appeal Board (TTAB).

On appeal, Brooks Brothers acknowledged that because its description included goods “not made of fleece fabric” that the term “black fleece” is facially misdescriptive of apparel that is not made of black fleece. Nonetheless, Brook Brothers argued that consumers are not likely to believe the facial misrepresentation.   At this point, you might be saying to yourself what the heck is going on?  The gist of the Brook’s Brother’s position was that the term “black fleece” was so well known among its customers that they understand that the term does not necessarily refer to clothing made of black fleece.  This is referred to as “secondary meaning,” a subject we have written about several times in this newsletter.

The TTAB did not buy the argument.  Here is its analysis. A trademark may be merely descriptive of goods or services if it conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. Whether the term is merely descriptive is determined not in the abstract, but in relation to the goods or services at issue, the context in which mark is being used, and the possible significance of the term to the average purchaser of the goods or services.  According to the TTAB, it is well-settled that “the question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods or services are will understand the mark to convey information about them.”  So, if a mark conveys an idea or information that is false, even if plausible, then it is “deceptively misdescriptive and unregisterable under trademark law.”

The TTAB applied a two-part test to determine deceptive misdescription:  First, it asked does the mark misdescribe goods or services to which it applies? And, second, if so, would consumers likely believe this description? The TTAB held that “BLACK FLEECE clearly describes a type of clothing, and applicant’s identification of goods states that its clothing is not of that type” thus satisfying part one of the test.  As to part two of the test, the TTAB held that Brooks Brother’s clothing is available not only to discerning customers who may understand the brand, as Brook Brothers argued, but to everyone else, including people buying from catalogues and online sources who could not examine the goods.

Keep in mind that had Brooks Brothers proven that its deceptively misdescriptive mark had acquired secondary meaning, it could have overcome the objections of the TTAB. The evidence on this score, however, was weak.  The lesson here is that choosing an appropriate trademark requires more than just picking the “cool” or fashionable sounding term, it also requires an understanding of the technicalities of trademark law.

– Adam G. Garson, Esq.