The Purpose and Scope of Trademark Protection
Trademarks are protected to help consumers distinguish among competing products, and to secure for the owners of trademarks the goodwill of their businesses. Put another way, trademarks are protected to prevent a specific kind of unfair competition that might hurt consumers.
Trademark protection extends to any word, term, name, symbol, or device that is used on or in connection with any goods or services. 15 U.S.C. § 1125(a)(1). If someone’s use of these symbols is likely to cause confusion or mistake about the origin, sponsorship, or approval of any goods or services, that person may be in violation of the law. U.S.C. § 1125(a)(1)(A) This may also be true if any of these words, terms, names, symbols or devices are used to misrepresent goods or service in commercial advertising. U.S.C. § 1125(a)(1)(B).
If someone is infringing or has infringed upon your trademark, the Lanham Act empowers you to protect your rights by bringing a lawsuit against the infringer. This Act offers broad and powerful remedies, including injunctions to prevent further infringement, recovery of the infringer’s profits, damages sustained by the trademark holder, and even the costs of bringing an action. 15 U.S.C. § 1117(a). Some states also offer their own separate protections. See, e.g., Cal. Business & Professions Code § 14245.
Suits for Infringement under “Trade Dress”
One category of content that is protected from trademark infringement is known as “trade dress.” This category concerns “not just similarity of names of products, but also similarity in the overall trade dress of the products.” Kelley Blue Book v. Car-Smarts, Inc. (C.D. Cal. 1992) 802 F.Supp. 278, 288. This can include a particular shape, such as a Coca-Cola bottle. Qualitex Co. v. Jacobson Products Co., Inc. (1995) 514 U.S. 159, 162. Trade dress may be protected under trademark law if it is (1) distinctive, and if (2) a showing can be made that the average consumer would likely be confused as to product origin if another product had a similar appearance.
A trade dress can meet the distinctiveness requirement if it is either “inherently distinctive,” or if it “has acquired distinctiveness through secondary meaning.” In re Patio Industries (C.D. Cal. 1996) 220 B.R. 672, 681 aff’d, (9th Cir. 1998) 141 F.3d 1178. To be inherently distinctive, a trade dress needs to be capable of identifying a particular source of the product. As a possible alternative, proof of intentional copying of a trade dress may sometimes be sufficient to establish that the trade dress is inherently distinctive and/or has acquired secondary meaning. In re Patio Industries, supra, at 681.
The second requirement for trade dress is that the similarities would probably cause the average consumer to be confused about the origin of the product. The eight factors that a court generally weighs when considering this question are:
- the strength of the mark;
- the proximity of the goods;
- the similarity of the marks;
- whether there is evidence of actual confusion;
- the marketing channels used;
- the type of goods and the degree of care likely to be used by the purchaser in selecting the goods;
- the defendant’s intent in selecting the mark; and
- the likelihood of expansion of the product line.
In re Patio Industries, supra, at 681-82.
Although any of these factors can be very important, courts are often especially concerned with the second factor, which considers how closely related the goods are. Related goods are those that would be reasonably thought by the buying public to come from the same source if sold under the same mark. Groupion, LLC v. Groupon, Inc., (N.D. Cal. 2012) 859 F.Supp.2d 1067, 1074.
The Functionality Doctrine Defense
Lawsuits to protect trade dress sometimes run into a defense that is known as the Functionality Doctrine. See 15 U.S.C. § 1125(a)(3). This Doctrine prevents trademark law from overreaching into markets where a design “is one of a limited number of equally efficient options available to competitors and free competition would be unduly hindered by according the design trademark protection.” In re Patio Industries,supra, at 680.
A product feature is functional, and hence cannot serve as a trademark, “if it is essential to the use or purpose of the article or if it affects the cost or quality of the article,” Qualitex Co. v. Jacobson Products Co., Inc., (1995) 514 U.S. 159, 165. In other words, “if exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage.” Id.