About | HeinOnline Law Journal Library | HeinOnline Law Journal Library | HeinOnline
LOG IN
LOG IN

16 IPL Newsl. 1 (1997-1998)

handle is hein.journals/iprolane16 and id is 1 raw text is: A PUBLICATION OF THE AMERICAN BAR ASSOCIATION SECTION OF INTELLECTUAL PROPERTY LAW VOLUME 16, NUMBER 1 FALL 1997 Recent Developments in the Trade Dress Protection of Incontestably Registered Functional Designs BY THEODORE H. DAVIS JR. In Twso Pesos, Inc. it Taco Cabana, Ic.ic, and Qualitex Co. v. Jacobson Products Co.,2 the Supreme Court placed its imprinmatur on expanded brand protection for restaurant interi- ors and individual colors, respectively. Although it was not until 1923 that the TheodoreH. DavlsJr. Court upheld the issuance of an injunction in a trademark dispute,3 it now has removed virtually all restrictions on what can constitute a protectable brand signal. In thus expanding the frontiers of trade dress protection, the Court reached outcomes consistent with those in lowcr court decisions extending protection to such disparate items as packag- ing,4 fragrance, unique sales techniques,' and, increas- ingly, to product configurations.7 The success of plaintiffs in asserting trade dress rights to unregistered configurations tinder the common law and section 43(a) of the federal Lanham Act' increasingly has led potential trade dress clainants to pursue federal regis- tration of those items. Thus, recent litigation belore the Trademark Trial and Appeal Board has addressed the reg- istrability of marks consisting of the configurations of blood pumps, outdoor greenhouses,) and even a mned- ical apparatus used to effect simultaneous, multiple skin tests for detecting immediate hypersensitivity to aller- gens.'' These decisions, however, have applied a straightforward, noncontroversial doctrinal analysis when compared to litigation outside the registrability context, namely infringement litigation to protect registered con- figurations. This article surveys and examines recent case law in cases presenting claims of infringement of a federally registered trade dress consisting in part of functional ele- ments. The article first examines tile doctrinal framework and respective burdens of proof governing infringement actions to protect unregistered nonverbal designs. Next, the article examines the significance of a federal registra- tion covering the plaintiff's design. Finally, the article addresses recent case law arising in cases involving Mr. Davis is with Kilpatrick Stockton LLP in Atlanta. incontestable federal registrations that have passed their fifth anniversary of issuance and for which the registrants have filed affidavits under section 15 of the Lanham Act and, additionally examines recent congressional activity in the area. Protecdion of Unregistered Designs nnder a Trade Dress Theory A plaintiff owner of' a claimed, but unregistered, non- verbal designation will be eligible for relief against copy- •ing if' three sets of' circumstances are present: (I) the conliguration is a distinctive indicator of' origin viewed by consumers in the same manner as a verbal tradenark, (2) the conliguration is nonfunctional or, in other words, not essential to the performance or quality of' the goods in question; and (3) the defendant's use of a similar design is likely to cause confusion in the marketplace. In most jurisdictions, the plaintif'f bears the burden of proof' on each of' the factors. In the Second, Seventh, and Tenth (continued on page 23) Keeping Current with the Chair ........... ..... The Implied License: an Evolving Defense ;, Valuation of Intellectual Property ....... ... ..... young bLityers' Column: Internet HYperlinks'.,, Washington Legislative Report ......................... .. Recent Developments in In elecua ro er.I b . ........................, .. hnlmnatioun of'Section Resolultions,.:.':?TI,;:, FP Group News .. Officers, Council and Committee Chairs ..................... VISITTIFIE SECTION 0N THE ABA'SAVE111 SITE fl,'II'l)://%VWNV.AIIANE'I'.OIIG

What Is HeinOnline?

HeinOnline is a subscription-based resource containing thousands of academic and legal journals from inception; complete coverage of government documents such as U.S. Statutes at Large, U.S. Code, Federal Register, Code of Federal Regulations, U.S. Reports, and much more. Documents are image-based, fully searchable PDFs with the authority of print combined with the accessibility of a user-friendly and powerful database. For more information, request a quote or trial for your organization below.



Short-term subscription options include 24 hours, 48 hours, or 1 week to HeinOnline.

Purchase Access

Contact us for annual subscription options:

Contact Us

Already a HeinOnline Subscriber?

Log In

profiles profiles most