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2 Ten Tips for Developing Protectable Trade Dress May 21, 2014 Presented By: Thomas M. Williams Partner, Ulmer & Berne Chicago, IL Derek Holland General Counsel, Red Frog Events Chicago, IL

3 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) 3

4 3 Common Forms of Trade Dress 1. Product Packaging e.g., Wheaties box 4

5 3 Common Forms of Trade Dress 2. Product Design or Product Configuration e.g., Rubik s Cube e.g., Goldfish cracker 5

6 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 (W.D. Pa. March 31, 2010) 6

7 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 7

8 Representative Cases 8

9 Tough Mudder v. Mad Cap Events Tough Mudder Obstacle 1 Savage Race Obstacle 1 9

10 Tough Mudder v. Mad Cap Events Tough Mudder Obstacle 2 Savage Race Obstacle 2 10

11 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 (M.D. Fla. 2012) 11

12 Color Run v. Color Me Rad 12

13 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 (D. Utah 2012) 13

14 Rawlings Sporting Goods v. Under Armour Rawlings Batting Helmet Under Armour s Ad 14

15 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) 15

16 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 (C.D. Cal. 2006) 16

17 Urban Group Exercise Consultants v. Dick s Sporting Goods Urban Group s Trampoline Trampoline Sold at Dick s Sporting Goods 17

18 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 (S.D.N.Y. 2013) 18

19 Ten Tips for Developing Protectable Trade Dress 19

20 1. Develop distinctive designs Create arbitrary design flourishes. TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 32 (2001) 20

21 What is a flourish? Not this: 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) 21

22 2. Search and clear the design Ask questions regarding origin of your proposed design Obtain trademark search report 22

23 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) 23

24 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

25 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. 25

26 4. Review utility patents: trade dress and utility patents don t mix In re Rolf Dietrich, 91 USPQ2d 1622 (TTAB 2009) 26

27 4. Review utility patents: trade dress and utility patents don t mix (con t) In re Karsten Manufacturing Corporation, Serial No (April 15, 2009) [not precedential] In contrast, trade dress and design patents often coexist 27

28 5. Do not do utilitarian advertising Do not tout functional, utilitarian, performance benefits of the trade dress 28

29 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) 29

30 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 30

31 8. Maintain trade dress rights through consistent use Use and promote the trade dress Maintain consistency 31

32 8. Maintain trade dress rights through consistent use (con t) 32

33 9. Develop advertising campaign and commit to it over time 33

34 10. Do look-for advertising Look for the trade dress design Include trade dress notices in ad copy and packaging 34

35 Bonus Tip: Consider design patents Compatible with trade dress Relatively inexpensive Part of bundle of rights with copyright and trade dress 35

36 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 36

37 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 37

38 Questions? 38

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