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work on a short essay, The TTABs Dangerous Dismissal of Doubt (Harv. J.L. & Tech., Nov. 12, 2013; available for download at http://ssrn.com/abstract=2349076). The presentation was rst given at NYUs Tri-State IP Workshop on Jan. 10, 2014; it is the basis for a full-length work-in-progress on the same topic. Offers to publish the nished article are, of course, welcome.
(from Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976))
SOME COURTS HAVE TRIED TO APPLY THE GENUS TEST TO DETERMINE WHEN PRODUCT-DESIGN TRADE DRESS IS GENERIC
See, e.g., Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 115 (2d Cir. 2001): [E]ven a showing of secondary meaning is insufficient to protect product designs that are overbroad or genericthose that refe[r] to the genus of which the particular product is a species. Jeffrey Milstein, 58 F.3d at 32, 33 (quoting Two Pesos, 505 U.S. at 768). This check on monopoly rights limits all marks, but for two reasons it is particularly important in cases of product design.
How does one determine when product-design trade dress refers to the genus of which the particular product is a species? Clearly, one cannot enforce trade dress rights in a shirt-shaped shirt, but beyond that...
DISCUSSION OF GENERIC TRADE DRESS QUICKLY BLEEDS INTO TALK OF (AESTHETIC) FUNCTIONALITY
Fun-Damental Too, Ltd. v. Gemmy Industries Corp., 111 F.3d 993, 1000 (2d Cir. 1997) (pre-Samara Bros.) Yet trade dress protection has limits. A trade dress that consists of the shape of a product that conforms to a well-established industry custom is generic and hence unprotected. . . . [A] specific trade dress must still be evaluated to determine whether it is so distinctive as to point to a single source of origin and thereby be entitled to Lanham Act protection. Malaco Leaf, AB v. Promotion In Motion, Inc., 287 F.Supp.2d 355, 363 (S.D.N.Y. 2003) [D]efendants argue that Malacos product configuration in its Swedish Fish is unprotectable because it is (1) generic, and (2) functional. Defendants argue that Malacos Swedish Fish product design is not entitled to protection because it is a generic, common design that is used extensively by third parties in the confectionery industry. (Def.s Br. at 4.) This Court agrees that the generic design of Malacos Swedish Fish, along with extensive third party use of the design and Malacos failure to police infringing third-party uses, renders the Swedish Fish design generic and unprotectable. . . . [Further,] the other product design features such as the head, tail, scale pattern and eye are necessary attributes to portray any fish. Notably, nearly every third party marketing gummy fish-shaped candy portrays identical features. (Def.'s Ex. C.) Therefore, since Malaco's product design trade dress involv[es] an aesthetic feature, the dress is ... functional [since] the right to use it exclusively would put competitors at a significant non-reputation-related disadvantage.
FRANCO & SONS, INC. V. FRANEK, 615 F.3d 855, 860, 861 (7th Cir. 2010)
The composition of the relevant market matters. But the more rudimentary and general the element - all six-sided shapes rather than an irregular, perforated hexagon; all labels made from tin rather than a specific tin label; all shades of the color purple rather than a single shade - the more likely it is that restricting its use will significantly impair competition. Franek's towel is of this ilk. He has trademarked the configuration of a round beach towel. Every other beach towel manufacturer is barred from using the entire shape as well as any other design similar enough that consumers are likely to confuse it with Franek's circle (most regular polygons, for example).
FRANEK (CONT.)
The chief difficulty is distinguishing between designs that are fashionable enough to be functional and those that are merely pleasing. There are only so many geometric shapes; few are both attractive and simple enough to fabricate cheaply. Cf. Qualitex, 514 U.S. at 168-69, 115 S.Ct. 1300 (functionality doctrine invalidates marks that would create color scarcity in a particular market). And some consumers crave round towels-beachgoers who prefer curved edges to sharp corners, those who don't want to be square, and those who relish the circle's simplicity. A producer barred from selling such towels loses a profitable portion of the market. The record does not divulge much on these matters, but any holes in the evidence are filled by the TrafFix presumption that Franek's mark is functional, a presumption he has failed to rebut.
WHEN/HOW CAN THE RECORD DIVULGE MUCH ON AESTHETIC FUNCTIONALITY WHERE INDUSTRY CUSTOM IS UNAVAILING?
REMINDERS
My framework is designed to be relatively narrow; that productdesign trade dress is not generic does not mean it is not/does not: (1)! merely ornamental (per Trademark Office and some federal case law); (2)! otherwise require secondary meaning (per Samara Bros.); (3)! a poor candidate for a likelihood of confusion; or (4)! aesthetically functional
Questions or comments?