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)


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