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Trademarks Class 11

Trademarks Class 11. Trade dress and functionality. Samara-type dress. Wal-Mart v. Samara Bros.

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Trademarks Class 11

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  1. Trademarks Class 11 Trade dress and functionality

  2. Samara-type dress

  3. Wal-Mart v. Samara Bros. “Consumers are aware of the reality that, almost invariably, even the most unusual of product designs—such as a cocktail shaker shaped like a penguin—is intended not to identify the source, but to render the product itself more useful or more appealing.” [307]

  4. Pete the Penguin Cocktail Shaker

  5. Distinguishing Two Pesos “Two Pesos unquestionably establishes the legal principle that trade dress can be inherently distinctive, but it does not establish that product-design trade dress can be. [T]he trade dress at issue, the decor of a restaurant, seems to us not to constitute product design. It was either product packaging—which, as we have discussed, normally is taken by the consumer to indicate origin—or else some tertium quid that is akin to product packaging and has no bearing on the present case.” [308]

  6. Inwoodon functionality 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” • held, color of pills is functional, even though — not essential — doesn’t affect cost or quality

  7. TrafFix Devices v. Marketing Displays “A utility patent is strong evidence that the features therein claimed are functional. . . . [O]ne who seeks to establish trade dress protection must carry the heavy burden of showing that the feature is not functional, for instance by showing that it is merely an ornamental, incidental, or arbitrary aspect of the device.”[319]

  8. Application of the rule • “the central advance claimed in the expired utility patents . . . is the dual-spring design” • “the dual-spring design is the essential feature of the trade dress MDI now seeks to establish and to protect” [319]

  9. The Inwood-Qualitex factors 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” • “that is, if exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage”

  10. Limited scope of the Qualitex gloss “Where the design is functional under the Inwood formulation there is no need to proceed further to consider if there is a competitive necessity for the feature.” [321]

  11. No need to consider other designs “Because the dual-spring design is functional, it is unnecessary for competitors to explore designs to hide the springs, say, by using a box or framework to cover them, as suggested by the Court of Appeals.” [321]

  12. Disagreement on role of alternative designs • McCarthy: • “[T]he finder of fact should also be permitted to consider the existence or nonexistence of alternative designs as part of the total evidentiary matrix to be weighed in reaching the conclusion of whether this design is in fact ‘essential’ and whether it affects the ‘cost or quality of the article.’ ” • Eppendorf-Netheler-HinzGMBH v. Ritter GMBH, 289 F.3d 351 (5th Cir. 2002): • “The availability of alternative designs is irrelevant.”

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