Trade dress

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Ten Tips for Developing Protectable Trade Dress
May 21, 2014
Presented By:
Thomas M. Williams
Partner, Ulmer & Berne
Chicago, IL
[email protected]
312-658-6556
Derek Holland
General Counsel, Red Frog Events
Chicago, IL
[email protected]
312-980-9991
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What is Trade Dress?
Trade dress:
“a combination of any elements in which a product
is presented to a buyer” including the shape and design
of the product. Art Attacks Ink, LLC v. MGA
Entertainment Inc., 581 F.3d 1138, 1145
(9th Cir. 2009)
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3 Common Forms of Trade Dress
1.  Product Packaging
e.g., Wheaties® box
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3 Common Forms of Trade Dress
2.  Product Design or Product Configuration
e.g., Rubik’s Cube®
e.g., Goldfish®
cracker
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3 Common Forms of Trade Dress
3.  Websites
The “look and feel” of a website can be protected as
“trade dress.” Conference Archives, Inc. v. Sound
Images, Inc., 2010 WL 1626072 (W.D. Pa. March
31, 2010)
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Protecting Trade Dress
•  Trade dress is protectable under federal trademark
and unfair competition law (“Lanham Act” at 15
U.S.C. § 1051, et seq.)
–  Trade dress is registrable as a trademark/service
mark in the USPTO
–  “Common law” trade dress is also protectable
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Representative Cases
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Tough Mudder v. Mad Cap Events
Tough Mudder Obstacle 1
Savage Race Obstacle 1
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Tough Mudder v. Mad Cap Events
Tough Mudder Obstacle 2
Savage Race Obstacle 2
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Tough Mudder v. Mad Cap Events
•  Tough Mudder and Savage Race produce obstacle course running
events throughout the US
•  Tough Mudder complained that Savage Race copied the look and
feel of its posters, websites and events, including the obstacles on
the course
•  Tough Mudder sought an injunction that relied on, among other
theories, trade dress infringement
•  Result: Court found that Tough Mudder was not likely to prevail on
the merits because there was no confusion and the obstacles were
functional/core elements of all obstacle course races ("Monkey bars,
mud puddles and barbed wire are staples … so the fact that both
events include them is not indicative of copying."). Tough Mudder,
LLC v. Mad Cap Events, LLC, No. 6:12-cv-00354 (M.D. Fla. 2012)
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Color Run v. Color Me Rad
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Color Run v. Color Me Rad
•  Color Run and Color Me Rad produce "color runs" throughout the
world, which require participants to run a 5 kilometer race with a
white t-shirt upon which various colored powder paints are thrown
at the runner at approximately each kilometer along the course
•  Color Run sought an injunction based on Color Me Rad's copying of
the look and feel of Color Run events, claiming that they had
exclusive rights to the entire "color run" concept
•  Result: Court found that Color Run had not demonstrated a
substantial likelihood of success on its trade dress claim; however,
it upheld Color Run's trademark infringement and unfair competition
claims. The Color Run v. Springbok Group et al, No. 2:12-cv-00810
(D. Utah 2012)
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Rawlings Sporting Goods v. Under Armour
Rawlings’ Batting Helmet
Under Armour’s Ad
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Rawlings Sporting Goods v. Under Armour
•  Rawlings manufactures the COOLFLO® batting helmet
with a unique two-tone fading color scheme
•  Under Armour began producing promotional advertising
for batting gloves which featured a batter wearing a
COOLFLO® helmet but with the Under Armour logo
•  Rawlings sues for trade dress violations
•  Result: Court granted preliminary injunction. Rawlings
Sporting Goods v. Under Armour, Case No. 10-cv-0933,
W.D. Wash. (2011)
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Yamaha Motors Corp. v. Yamoto Motor Corp.
Yamaha’s ATV
Yamoto’s ATV
•  Result: Consent judgment entered against Yamoto
permanently enjoining importation into the United States.
Yamaha Motors Corp. v. Yamoto Motor Corp., Case No.
2:05-cv-07351 (C.D. Cal. 2006)
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Urban Group Exercise Consultants v.
Dick’s Sporting Goods
Urban Group’s Trampoline
Trampoline Sold at Dick’s Sporting Goods
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Urban Group Exercise Consultants v.
Dick’s Sporting Goods
•  Urban Group brought a trade dress claim against
Dick’s Sporting Goods for infringement of an
unregistered trampoline color scheme design
•  Result: Dismissed under a 12(b)(6) motion for failure
to adequately define protectable trade dress. Urban
Group Exercise Consultants v. Dick’s Sporting
Goods, Case No. 1:12-cv-03599 (S.D.N.Y. 2013)
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Ten Tips for
Developing Protectable
Trade Dress
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1. Develop distinctive designs
•  Create arbitrary design “flourishes.” TrafFix Devices,
Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 32 (2001)
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Not this:
What is a “flourish”?
This:
Maker’s Mark v.
Diageo N. Am., 679 F.
3d 410 (6th Cir. 2012)
Groeneveld Transport Efficiency
Inc. v. Lubecore International Inc.,
730 F.3d 494 (6th Cir. 2013)
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2. Search and clear the design
•  Ask questions regarding origin of your proposed design
•  Obtain trademark search report
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3. Avoid “functional” designs
Utilitarian Functionality:
• “In general terms, a product feature is functional if it is
essential to the use or purpose of the article or if it
affects the cost or quality of the article.” Inwood Labs. v.
Ives Labs., 456 U.S. 844, 850 n.10 (1982)
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3. Avoid “functional” designs (con’t)
Aesthetic Functionality:
• “[I]f a design's “aesthetic value” lies in its ability to
‘confe[r] a significant benefit that cannot practically be
duplicated by the use of alternative designs,’ then the
design is ‘functional.’” Qualitex Co. v. Jacobson Products
Co., 514 U.S. 159, 170 (1995)
• “The ‘ultimate test of aesthetic functionality,’ …’is
whether the recognition of trademark rights would
significantly hinder competition.’” Qualitex, 514 U.S.
at 176
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3. Avoid “functional” designs (con’t)
•  Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527
(Fed. Cir. 1994)
–  Trade dress: color black for outboard motors
–  Holding: aesthetically functional, not protectable as a mark
–  “All outboard engine manufacturers color their products. These
manufacturers seek colors that easily coordinate with the wide
variety of boat colors. The Board found that the color black
served this non-trademark purpose. In addition, the Board found
that the color black serves the non-trademark purpose of
decreasing apparent object size.”
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4. Review utility patents: trade dress and
utility patents don’t mix
In re Rolf Dietrich, 91 USPQ2d 1622 (TTAB 2009)
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4. Review utility patents: trade dress and
utility patents don’t mix (con’t)
In re Karsten Manufacturing Corporation, Serial No. 77170356
(April 15, 2009) [not precedential]
•  In contrast, trade dress and design patents often coexist
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5. Do not do utilitarian advertising
•  Do not tout functional, utilitarian, performance
benefits of the trade dress
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6. Consider color as trade dress
•  However, do not use color as part of a coding or
grading system
–  Coding is functional
•  Louboutin shoe
Christian Louboutin S.A. v. Yves Saint Laurent Am. Inc., 696 F.3d 206 (2d Cir. 2012)
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7. Proceed with caution in USPTO
•  Examiners are pushing back on trade dress
–  Registration may be costly and time-consuming
–  A final refusal will negatively impact common law claims
•  Industry may preemptively oppose pending application
•  Even if registered, functionality is always on the table
–  Functionality is grounds for cancellation, even after mark
becomes “incontestable”
•  Section 43(a) is available
–  Section 43(a) is available for “common law” trade dress plaintiffs
–  Unregistered trade dress owner bears burden of proof on validity
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8. Maintain trade dress rights through
consistent use
•  Use and promote the trade dress
•  Maintain consistency
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8. Maintain trade dress rights through
consistent use (con’t)
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9. Develop advertising campaign and
commit to it over time
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10. Do “look-for” advertising
•  “Look for” the trade dress design
•  Include trade dress notices in ad copy and packaging
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Bonus Tip: Consider design patents
•  Compatible with trade dress
•  Relatively inexpensive
•  Part of “bundle of rights” with copyright and trade
dress
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Ten Tips for Developing
Protectable Trade Dress
1.  Develop distinctive designs
2.  Search and clear the design
3.  Avoid “functional” designs
4.  Review utility patents: trade dress and utility patents
don’t mix
5.  Do not do utilitarian advertising
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Ten Tips for Developing
Protectable Trade Dress
6.  Consider color as trade dress
7.  Proceed with caution in USPTO
8.  Maintain trade dress rights through consistent use
9.  Develop advertising campaign and commit to it over
time
10. Do “look-for” advertising
11.  Consider design patents
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Questions?
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