The Key Appears to Be Something Analogous to “Look For” Advertising • AmberWatch Alarm Sound Example: • Failure to Function as Trademark • Failed to educate consuming public – no “Listen For” Ads or Description of Sound. F ” Ad D i ti f S d • Al Roker PSA: “The sound you are about to hear means a child may need your help ” means a child may need your help. • Consider this Subtle Alternative: The unique sound you are about to hear means a child protected with y p an AmberWatch bracelet may need your help! 25 25
Tips to Establishing Rights in Non-Traditional Trademarks • Due diligence; investigate the competitive Due diligence; investigate the competitive landscape. • Create uncommon, unusual or unexpected Create uncommon, unusual or unexpected features. • File intent-to-use application. File intent to use application. • Close review of marketing materials needed to avoid functionality admissions. to avoid functionality admissions. • Educate consumers through use of “look for” analogs. analogs. 26 26
Thank you! Stephen R. Baird Chair, Intellectual P Property and Trademark t d T d k Brand Management Winthrop & Weinstine Winthrop & Weinstine, P.A. (612) 604-6585 ( ) sbaird@winthrop.com www.DuetsBlog.com 27 27
S O U N D S O U N D P A C K A G I N G P A C K A G I N G Registration of Nontraditional Trademarks in the United States in the United States Linda K. McLeod 202.408.6036 linda.mcleod@finnegan.com
Functionality and Distinctiveness Two key hurdles for registration of nontraditional marks: (1) Functionality • If mark is functional, it is not entitled to registration (2) Distinctiveness • Mark must be distinctive either Mark must be distinctive either Inherently distinctive, or Acquired distinctiveness 29
Functionality - Overview TrafFix Devices, Inc. v. Mktg. Displays Inc. , (2001) – Mark is functional if it is “essential to the use or purpose of the product or if it affects the cost of quality of the product.” cost of quality of the product. – “[w]here the design is functional under the Inwood formulation there is no need to proceed further to consider if there is a proceed further to consider if there is a competitive necessity for the feature.” 30
Functionality – Burdens and Evidence Morton-Norwich Evidentiary Factors: (1) (1) Existence of utility patent ( even Existence of utility patent ( even abandoned ) that discloses utilitarian advantages (2) (2) Advertising that touts utilitarian advantages Advertising that touts utilitarian advantages (3) Availability of alternative designs (4) Whether design results from comparatively simple or inexpensive method of p p manufacture – Valu Engineering, Inc. v. Rexnord Corp. , (Fed. Cir. 2002) 31
Product Design - Functional Valu Eng’g, Inc. v. Rexnord Corp. (Fed. Cir. 2002) – Holding: TrafFix did not alter Morton-Norwich – Affirms that configuration of “conveyor guide rails” are functional because the cross-sectional design was competitively significant for use in “wet areas” of bottling and canning plants • Abandoned utility patent disclosed design advantage • Advertising touted design advantage g g g 32
Product Design - Functional M-5 Steel Mfg., Inc. v. O’Hagins Inc. (TTAB 2001), holding configuration of metal ventilating ducts and vents functional because it blends in or matches the roof tiles with which they are used and are better than alternative products 33
Product Design - Functional Kistner Concrete Products, Inc. v. Contech Arch Tech., Inc . (TTAB 2011), finding Supplemental Registration of a configuration for “a one-piece open bottom bridge unit, with parallel spaced vertical side walls connected by an arched top wall and having sharp outside corners and a width substantially greater than its length” for “precast concrete bridge unit for constructing a bridge or culvert” functional bridge unit for constructing a bridge or culvert” functional. – 5 expired utility patents tout efficiencies – Comments in media tout advantages of bridge unit design 34
Product Design – Functional In re Howard Leight Indus., LLC (TTAB 2006), holding applicant’s mark “a bullet-shaped earplug with vertical axis, a rounded bottom and a radially outwardly flared top” functional rounded bottom, and a radially outwardly flared top functional because makes ear plugs more visible and safety checks easier 35
Product Design – Functional In re Richemont Int’l, S.A. , (TTAB 2006), holding configuration of watchcase functional because it can be turned to effect a reversing motion flipping or pivoting one side of to effect a reversing motion flipping or pivoting one side of watchcase to the other side 36
Taste/Flavor - Functional In re N.V. Organon (TTAB 2006), finding the orange flavor of quick-dissolving medication functional based on advertisements indicating that the flavor encouraged patients to take medication indicating that the flavor encouraged patients to take medication – “[I]t is difficult to fathom exactly how a flavor could function as a source indicator in the classic sense, unlike the situation with other nontraditional trademarks such as color sound and with other nontraditional trademarks such as color, sound and smell, to which consumers may be exposed prior to purchase.” 37
Color - Functional Brunswick Corp. v. British Seagull Ltd. (Fed. Cir. 1994), affirming TTAB holding the color black for outboard motors is functional because it makes motor appear smaller and functional because it makes motor appear smaller and coordinates well with different boat colors 38
Color - Functional In re Orange Comm., Inc. (TTAB 1996), finding colors yellow and orange functional for public telephones and telephone booths because more visible at all times of day and emergency 39
Color - Functional Saint-Gobain Corp. v. 3M Co. (TTAB 2007), finding shade of purple for abrasive/sand paper functional p p p p because it was byproduct of manufacturing process, used in color-coding by third-parties, and there was a competitive need to use color for coated abrasives 40
Color – Non-Functional Newborn Bros. & Co. v. Dripless, Inc. (TTAB 2002), dismissed opposition to registration of the color “yellow” applied to “caulking guns,” rejecting functionality claim, and li d t “ lki ” j ti f ti lit l i d finding acquired distinctiveness 41
Sound - Functional In re Vertex Group LLP (TTAB 2009), holding alarm sound from a child's safety bracelet unregistrable because it is a f functional sound essential to the use or purpose of bracelet, and ti l d ti l t th f b l t d it had not acquired distinctiveness 42
Inherent or Acquired Distinctiveness Seabrook Test for Inherent Distinctiveness: – – Whether mark is a common basic shape or design Whether mark is a common basic shape or design – Whether mark is unique or unusual in field – Whether mark is merely a refinement of a commonly adopted and well-known form of ornamentation recognized by public for those goods – Whether mark is capable of creating a commercial e e a s capab e o c ea g a co e c a impression separate from any word mark 43
Acquired Distinctiveness Yamaha Int’l Corp. v. Hoshino Gakki Co. (Fed Cir. 1998) – “[E]xact kind and amount of evidence necessary to establish such secondary meaning necessarily depends on the h d i il d d th circumstances of the particular case.” – As mark's non-distinctiveness increases, greater evidentiary showing pursuant to Section 2(f) is required Proof of Acquired Distinctiveness: Proof of Acquired Distinctiveness: – Prior existing Principal Registration – Five years substantially exclusive and continuous use in commerce – Direct and circumstantial evidence 44
Acquired Distinctiveness – Direct & Circumstantial Evidence Length of use: – In re Gibson Guitar Corp., (TTAB 2001) (sixty-six years of use insufficient for guitar design) – In re Howard Leight Indst., LLC , (TTAB 2006) (fifteen years insufficient for earplug configuration) – In re F. Schumacher & Co., (TTAB 2004) (five years sufficient to prove 2(f) for rounded book binding constituting product to prove 2(f) for rounded book binding constituting product packaging) Significant Sales & Advertising Figures: – Yamaha Int’l Corp. v. Hoshino Gakki Co . ($120K guitars sold Yamaha Int’l Corp v Hoshino Gakki Co ($120K guitars sold 1980-85, and 1 million promotional materials distributed sufficient for guitar-head design) – Goodyear Tire & Rubber Co. v. Interco Tire Corp. (TTAB Goodyear Tire & Rubber Co v Interco Tire Corp (TTAB 1998) ($56 million revenues and 740,000 tires sold in sufficient for tire tread design) 45
Acquired Distinctiveness – Direct & Circumstantial Evidence Significant Sales & Advertising Figures: – In re Haggar Co. , (TTAB 1982) ($5 million advertising; $150 million sales for five years sufficient for black swatch clothing million sales for five years sufficient for black swatch clothing label) – In re Kwik Lok Corp., (TTAB 1983) (several hundred thousands of dollars advertising in sufficient for closure thousands of dollars advertising in sufficient for closure device) Nature & Extent of Use: – Number of stores, signs, visitors, viewers, accounts, Number of stores signs visitors viewers accounts consumers readers exposed to mark – Location of signage and billboards on major highways, intersections major malls and streets high visibility intersections, major malls and streets, high visibility – Number of products/units sold over years bearing mark 46
Acquired Distinctiveness – Direct & Circumstantial Evidence Sophisticated Consumers & Industry Practice: – Such consumers are accustomed to and “could expect color to serve a source-identifying function.” In re Chun Kee Steel & y g Wire Rope Co., (TTAB 2002) (color of rope and wire found to have acquired distinctiveness) Nature & Extent of Advertising: g – Identify major national magazines, newspapers, television containing advertising – Number of issues rotation circulation and viewership Number of issues, rotation, circulation, and viewership information related to advertisements – Sponsorships and sporting events, and any media coverage “Look For” Advertising: Look For Advertising: – Advertising and/or packaging that displays or touts mark (but not utilitarian or aesthetic features) 47
Acquired Distinctiveness – Direct & Circumstantial Evidence Unsolicited Media & Internet Attention: – Major national magazines, newspapers, television coverage mentioning or referring to mark, including “distinctive,” g g , g , “unique,” “well-known,” “famous” mark – Internet mentions or references to above Consumer Dealer Industry Affidavits/Declarations: Consumer, Dealer, Industry Affidavits/Declarations: – Affidavits/declarations should specifically identify product, mark, and source-identifying function – Form affidavits/declarations unpersuasive Surveys, Market Research, and Consumer Studies: – Evidencing public identifies mark as source indicator – Evidencing public identifies mark as source indicator 48
Product Packaging – Inherently Distinctive In re Creative Beauty Innovations, Inc . (TTAB 2000), reversing PTO refusal of registration on the ground that the bottle packaging is not inherently distinctive and does not bottle packaging is not inherently distinctive and does not function as mark because the “award-winning” container design was found unique and unusual, and not a mere refinement of existing designs refinement of existing designs 49
Van/Auto Trade Dress – Inherently Distinctive In re PRG Parking Mgmt., L.L.C . (TTAB 2003), reversing refusal of “trade dress of a parking shuttle, comprising the overall color yellow and a series of black circles appearing thereon” on ground it does not function as mark • TTAB held trade dress “quite different” from examples in record and described it as “original, distinctive, and very peculiar in nature” and “completely arbitrary” for the identified services 50
Motion – Inherently Distinctive Reg. No. 1928423 (Oct. 17, 1995) for computer generated sequence showing the central element from several angles as though a camera is moving around the several angles as though a camera is moving around the structure – for motion picture films and other products Reg No 2092415 (Sept 2 1997) for moving image Reg. No. 2092415 (Sept. 2, 1997) for moving image design mark, comprised of an approximately five second visual sequence, depicts a city skyline, sky and water, enclosed in two concentric circles containing the words enclosed in two concentric circles containing the words "BROADWAY VIDEO.” As the city skyline comes into view the words "BROADWAY VIDEO" rotate clockwise within the circles surrounding the city. The image concludes with a red lightning bolt entering the circle and forming a “V.” 51
Sound Marks – Inherently Distinctive Animal Sounds : Electronic Sounds : Duck quacking word AFLAC a metallic resonating sound followed by two electronic beeps f ll d b t l t i b A i Animal Sounds : l S d and followed by a mechanical lion roaring ratcheting sound Musical Themes : Various Sounds : “I don’t wanna grow up, I’m a Toys R Us Kid” y the sound of burning g methamphetamine Single-note sounds : Human Voice : Pillsbury synthesized vibraphone- Dough Boy Giggle musical note B 52
Touch Mark – Inherently Distinctive Reg. No. 3155702 (Oct. 17, 2006) for wine – The mark consists of a el et te t red The mark consists of a velvet textured covering on the surface of a bottle of wine. The dotted line in the drawing is not a feature of the mark but is not a feature of the mark but is intended to show the location of the mark on a typical container for the goods; the dark/lower part of the goods; the dark/lower part of the container drawing shows the mark. The stippling in the drawing is not a feature of the mark, but a representation of how one type of velvet covering may appear in visual form. The mark is a sensory, touch mark 53
Scents – Inherently Distinctive In re Clarke (TTAB 1990), holding floral plumeria blossom fragrance non-functional and registrable for yarn 54
Holograms – (Some) Inherently Distinctive PTO allows registrations of hologram marks where application covers hologram of a particular design or shape. But see In re Upper Deck Co., (TTAB 2001) (affirming refusal on ground applicant ( ) ( g g attempted to register more than one mark, since specimens show hologram may have myriad of shapes, sizes and contents) Clothing Charge card and credit card services Trading cards Pharmaceutical prescription pads prescription pads Cosmetic products Cosmetic products 55
Chippendales’s Cuffs and Collar – Not Inherently Distinctive In re Chippendales USA, Inc. (Fed. Cir. 2010), aff’d TTAB’s application of the Seabrook factors to find that Chippendales’s Cuffs and Collar uniform is not inherently distinctive when used Cuffs and Collar uniform is not inherently distinctive when used in connection with adult entertainment services. The mark consists of a three-dimensional human torso with cuffs around the wrists and neck collar comprising of a bow tie and neck collar comprising of a bow tie. The dotted lines in the drawing indicate placement of the mark. The matter shown by the dotted lines is not claimed as a part of the mark and serves only to show the position of the mark. 56
Product Packaging –Not Inherently Distinctive In re Pacer Tech. (Fed. Cir. 2003), affirming TTAB holding that bottle cap packaging does not function as mark and is not inherently distinctive because the “winged configuration is at inherently distinctive because the winged configuration is, at best, a variation or ‘mere refinement’ of a useful, basic design scheme for adhesive product applicator caps.” 57
Sounds – Not Inherently Distinctive Nextel Comm., Inc. v. Motorola, Inc . (TTAB 2009) – Long-running battle between Motorola and Nextel over chirp sound emitted by cell phones and two-way radios – TTAB held that chirp was not inherently distinctive for products because it was emitted in the normal course of cell phone emitted in the normal course of cell phone operation – But capable of acquired distinctiveness for telecommunications services telecommunications services 58
Building Interior/Exterior – Not Inherently Distinctive Supp. Reg. No. 3310161 (Oct. 9, 2007) for vehicle washing and cleaning services – The mark consists of a three-dimensional building design in the shape of an elongated arch having two flat end portions, with window panels comprising the surface of the flat end portions, and window panels comprising the surface of the lower portions of the sides of the arch 59
Building Interior/Exterior – Not Inherently Distinctive Supp . Reg. No. 3150142 (Sept. 26, 2006) for restaurant services – The mark consists of the interior of a building, with a Th k i t f th i t i f b ildi ith checkered floor, checkered walls, counter with stools along half of one side of the building and in front of the kitchen, and b booths along the window on the other side of the building, th l th i d th th id f th b ildi and pendant lights hanging above counter and booths 60
Color & Interior Motif– Not Inherently Distinctive In re Hudson News Co. (TTAB 1996) , aff’d , (Fed. Cir. 1997): “Applicant's blue design motif for retail newsstand services is not inherently distinctive and therefore is not registrable not inherently distinctive, and therefore is not registrable without showing of acquired distinctiveness.” 61
Building Interior/Exterior – Acquired Distinctiveness Reg. No. 1761655 (March 30, 1993) conducting a securities exchange and related stock market services, since 1903 – Th The mark consists of a representation of an actual building k i t f t ti f t l b ildi facade with the wording "NEW YORK STOCK EXCHANGE" located beneath the pediment 62
Scents – Acquired Distinctiveness/Supp. Reg. Reg. No. 2463044 (June 26, Supp. Reg. No. 3140692 (Sept. 5, 2006) for grapefruit, 2001) for cherry and other lavender, vanilla, peppermint, scents for synthetic scents for synthetic and other scents for file lubricants folders, hanging folders, paper expanding files p p p g 63
Color– Acquired Distinctiveness Reg. No. 3317268 (Oct. 23, 2007) for the color yellow used on wristbands in the nature of a bracelet for use in fundraising and education in the field of cancer, cancer research, cancer recovery and survival Reg. No. 2359351 (June 20, 2000) for a shade of blue often referred to as “robin's-egg blue” for use on boxes for jewelry and other goods Reg. No. 2901090 ( Nov. 9, 2004) for the color chocolate brown, which is the approximate , pp equivalent of Pantone Matching System 462C, as applied to the entire surface of vehicles and uniforms for transportation and delivery of personal property by air and motor vehicle 64
Motion – Acquired Distinctiveness Reg. No. 2793439 (Dec. 16, 2003) for a mark consisting of the unique motion in which the door of a vehicle is opened. The doors move parallel to the body of the vehicle but are gradually doors move parallel to the body of the vehicle but are gradually raised above the vehicle to a parallel position – for automobiles 65
Sounds – Acquired Distinctiveness Reg. No. 2187082 (Sept. 8, 1998) for a combination of the sounds of thunder and rain with a strobe representation of lightening - for automatic produce misting units for delivering a lightening for automatic produce misting units for delivering a timed water mist to fruits and vegetables in display cases Reg. No. 2495301 (Oct. 9, 2001) for a musical excerpt of fourteen bars from the second movement (Andante con f t b f th d t (A d t tenerezza) of Howard Hanson's Symphony 2, op. 30 (Romantic)) - for live and broadcast musical concerts 66
Thank You! Linda K. McLeod 202 408 6036 202.408.6036 linda.mcleod@finnegan.com Finnegan, Henderson, Farabow, g , , , Garrett & Dunner, L.L.P. 67
POLICING AND ENFORCING RIGHTS IN NON TRADITIONAL TRADEMARKS IN NON-TRADITIONAL TRADEMARKS Stephen W. Feingold SFeingold@kilpatricktownsend com SFeingold@kilpatricktownsend.com (212) 775-8782
Trends in Trade Dress Enforcement Registration of trade dress is highly subjective and unpredictable. Courts treat evidence of copying in vastly different ways. y Use of Brand Name on Trade Dress Can Sometimes Mitigate Likelihood of Confusion Mitigate Likelihood of Confusion. Functionality analysis remains uncertain If at First You Don’t Succeed, Try Try Again….. 69
Best Practices for Enforcing Trade Dress • Difficult if not impossible to commission trade dress watch report that extends beyond applications for new marks. f • Train employees • Capitalize on fan base among consumers • Capitalize on fan base among consumers. – Incentives • Quarterly review of trade press and Internet Quarterly review of trade press and Internet searches • Update registrations to cover product expansion • Be fully prepared before you start process 70
Miche Bag v. Marshall Group, 2010 WL 2175837 (N.D. Ind. 2010) • Must balance need to move quickly with requirement for preparation. • Plaintiff filed for TRO on May 21; hearing set for June 7; plaintiff seeks extension of TRO for June 7; plaintiff seeks extension of TRO to hear PI in August after expert testimony and expedited discovery. 71
Plaintiff Must Be Fully Prepared When Seeking TRO or Preliminary Injunction “Simple arithmetic combines with Rule 65 to warn a movant that a TRO petition likely will lead to a preliminary injunction hearing within five or six weeks f of the TRO petition filing. One who can’t prepare in that time should think twice before beginning the g g process.” Miche Bag, LLC v. Marshall Group, 2010 WL 2175837 WL 2175837 72
Registration Continues to Be Subjective Arbitrary Process • In re Chevron Intellectual Property Group , 56 USPQ 2d 2026 (TTAB 2010) – Application of Seabrook factors finds that stylized pole spanner sign is not inherently distinctive. Notwithstanding 22 years of use insufficient Notwithstanding 22 years of use, insufficient evidence of acquired distinctiveness. 73
Registration Continues to Be Subjective Arbitrary Process •In re Chippendales, 622 F.3d 1346 (Fed. Cir. 2010) –Finding TTAB was correct in finding mark not Finding TTAB was correct in finding mark not inherently distinctive even though only argument advanced by examiner rejected. •Since all adult dancers wear uniforms, no Si ll d lt d if uniform can be inherently distinctive. 74
Wolf Appliances v. Viking Range Corp., 668 F. Supp. 2d 878 (D. Wis. 2010) 75
Facts • Wolf long associated with red knobs on stoves even if most retailer displays show standard black knobs. • Viking offered consumers choice of stainless steel, black, white or red through accessory kit. Finished product only shipped with stainless Finished product only shipped with stainless steel or black knobs. 76
Was Viking Copying Defendant? • One Viking dealer displayed range with red knobs and poster above it: “WHO'S AFRAID OF BIG BAD WOLF?” “WHO'S AFRAID OF BIG BAD WOLF?” • No other colors except red offered as accessory kit. • Sufficient for jury to conclude intentional copying Sufficient for jury to conclude intentional copying supporting finding of secondary meaning. – Also supports intent to confuse. 77
Rodan & Fields v. Estee Lauder, 2010 WL 78 3910178 (N.D. Cal. 2010)
• Rodan & Fields acquired by Estee Lauder 2003 and bought back by founders in 2007. • Plaintiff focused argument on striking similarity of two Pl i tiff f d t t iki i il it f t products which prove copying and therefore confusion. • Even if products were similar, presence of hang tag with Clinique mark avoids possible confusion. 79
Miche Bags Miche Bag v. The Marshall Group, 2010 WL 25239447 (N.D. Ind. 2010) 80 Sierra Bags
Miche Bag v. The Marshall Group Miche bag 81 Sierra bag
Defining the Trade Dress • Miche Classic Bag – Slightly-curved upper aspect of bag – Curved straps – Chrome, oval buckles – Rigid polygonal-shaped body – Rigid, polygonal-shaped body – Insert sides – Trapezoidal-shaped zipper ends – Removable decorative covers – Two tones 82
Miche Bag v. The Marshall Group, 2010 WL 25239447 (N.D. Ind. 2010) 83
Evidence of Copying • Defendant did not send specs to Chinese manufacturers but sketches and followed that with the actual Miche Bag. • Of course, if copied functional elements that would be protected protected. 84
Functional? • Miche has pending patent application for interchangeable covers. • Miche argues that other aspects of clamed trade dress are not functional. “The way that functional elements are assembled may be protected as trade elements are assembled may be protected as trade dress.” • No reference to trade dress in advertisements. 85
• Presence of Sierra's and Miche name on respective products not enough to avoid confusion. – Hang tag and interior label not visible to Internet uses who comprise large portion of Miche’s market market. 86
Consider Third Circuit Versa Products Decision • Each circuit uses multifactor test to evaluate likely confusion. Third Circuit has developed several different variations of this multifactor test depending different variations of this multifactor test depending on circumstances. • In Versa Products, 50 F.3d 189 (3d Cir. 1995), Third Circuit questioned if appropriate to see copying as Ci it ti d if i t t i evidence of anything in trade dress claim. 87
“Where product configurations are concerned, we must be especially wary of undermining competition. Competitors have broad rights to copy successful Competitors have broad rights to copy successful product designs when those product designs are not protected by (utility or design) patents. It is not unfair competition for someone to trade off of the good will competition for someone to trade off of the good will of the product. (Citing Kellogg v. National Brand).” 50 F.3d at 193 88
According to the Third Circuit….. • In the product configuration context, a defendant’s intent weighs in favor of a finding of confusion only if intent to confuse or deceive is demonstrated by clear f and convincing evidence, and only where the product’s labeling and marketing are affirmatively p g g y misleading. 89
Fiji Water Co. v. Fiji Mineral Water, 2010 WL 90 3835673 (C.D. Cal. 2010)
Distinctiveness • Plaintiff owns trademark registration issued in 2004 for bottle based on acquired distinctiveness. • Court found that bottle was inherently distinctive. – Why did Plaintiff argue this point after obtaining 2(f) registration? 2(f) registration? 91
Functionality • While square shape of bottle allows more bottles to be shipped in single container, overall appearance is non-functional. f • Plaintiff did not advertise shape of bottle in its advertisements advertisements. • This fact, however, did not impact finding on acquired distinctiveness because of sales and marketing expense. 92
Copying • Close similarity of bottles here permits inference of copying and therefore bad faith intent. – Effort to rely on advice of counsel failed because letter from counsel was not signed. 93
How Did Plaintiff Do It? • Eveready survey evidence showing 24% confusion rate was compelling evidence of confusion. 94
If At First You Don’t Succeed…… • General Motors Co. v. Urban Gorilla, LLC , 2010 WL 5395065 (D. Utah 2010) 95
General Motors Co. v. Urban Gorilla LLC • GM has a registered trademark in the shape of the H1 Hummer model, the Hummer nose and grill area, the word “Hummer ” and the slogan “Like Nothing Else ” Hummer, and the slogan Like Nothing Else. • In 1997, UG predecessor in interest launched a line of “body kits,” which customers install on a “donor” truck chassis A kit costs about $10 000 (less than 1/10th the cost chassis. A kit costs about $10,000 (less than 1/10th the cost of a Hummer). • In 1998, predecessor to GM sent a C&D letter to predecessor of UG claiming infringement of its registered predecessor of UG, claiming infringement of its registered trademarks “Humvee,” “Hummer,” and the ”Hummer Vehicle Nose Design.” Predecessor agreed to change its product line and discontinue use of surplus Hummer parts p p p in its kits. • No further contact until 2006, when GM sued UG. 96
2007: Court Denies Application for Preliminary Injunction • 10 th Circuit affirms denial of preliminary injunction finding that there was evidence that trade dress might be functional, that there was no f likelihood of confusion given different markets, and no evidence of actual dilution based on standard in place at that time. 500 F.3d 1222 (10 th Cir. 2007). 97
General Motors Co. v. Urban Gorilla LLC (on remand) 2010 WL 5395065 (D. Utah 2010) – Case tried in September of 2008. p – Additional briefs requested and submitted in February 2010 and again in July of 2010. – Decision issued December 27, 2010. Decision issued December 27 2010 98
Dilution Analysis • Court found that it must apply amended dilution law to determine request for injunctive relief but old dilution law to determine if monetary f damages should be awarded. • Uncontested that trade dress was famous Uncontested that trade dress was famous. • Court compared completed kits because that was what Defendant advertised. • Three of five kits were strongly similar to Hummer trade dress. 99
Trademark Analysis • Trade Dress is registered so defendant has burden to prove functionality. • While some features of trade dress are functional, defendant failed to show it was impossible not to defendant failed to show it was impossible not to use alternative designs. • Tracks dilution analysis to conclude three of five kits infringe but two do not . 100
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