Forum Replies Created
Thanks Mike! Speaking of Two Pesos –
Does anyone know why Two Pesos conceded that inherently distinctive trade dress could be protected initially? (“petitioner concedes that protecting an inh dist TD from its inception may be critical to new entrants…”) I don’t know why, as a matter of litigation strategy, they didn’t take the stronger (2d Cir) position and then offer this as a fallback – any thoughts?
Sure – here’s the syllabus.
Yes – the full quote is:
Most of the cases in which the Second Circuit has said that secondary meaning is required did not involve findings of inherent distinctiveness. For example, in Vibrant Sales, Inc. v. New Body Boutique, Inc., 652 F.2d 299 (1981), cert. denied, 455 U.S. 909, 102 S.Ct. 1257, 71 L.Ed.2d 448 (1982), the product at issue—a velcro belt—was functional and lacked “any distinctive, unique or non-functional mark or feature.” 652 F.2d, at 305. Similarly, in Stormy Clime Ltd. v. ProGroup, Inc., 809 F.2d 971, 977 (1987), the court described functionality as a continuum, and placed the contested rainjacket closer to the functional end than to the distinctive end. Although the court described the lightweight bag in LeSportsac, Inc. v. K mart Corp., 754 F.2d 71 (1985), as having a distinctive appearance and concluded that the District Court’s finding of nonfunctionality was not clearly erroneous, id., at 74, it did not explain why secondary meaning was also required in such a case.
Sorry to be late to the game and thanks for the interesting conversation (I love reading these things after the fact – everyone has said everything there is to say, and I get to soak it all in). I would add only a couple of things. First, whatever courts purport to do analytically, it strikes me that they have very different predispositions for previously-distinctive words than for marks that began as generic/descriptive terms. As long as there’s no evidence that the TM holder itself participated in genericide (cf. Bayer), and as long as there’s a satisfactory alternative (“Kleenex brand tissues” “Xerox brand copier” vs “Thermos”), courts seem loathe to abrogate previously-existing rights. I’ve never studied genericide so this may be off-base but it’s an impression that I have..and as Mike points out, even when they find a mark generic, they will sometimes find a way to provide limited protection anyway. On the flip-side, they seem equally loathe to remove a word from the vernacular if it’s one of a handful of terms that logically encapsulate a product. (It’s almost like a gut-level, implicit merger doctrine, I think – doesn’t that feel like what was going on in Pretzel Crisp?). Second, I just want to note one point in Kevin’s last comment – the idea that names are different from descriptive terms. If something is perceived as a surname, then it’s essentially treated the same as a descriptive term – i.e., it requires secondary meaning for protection. I think there’s an argument that “Pilates” would not be perceived as a surname, so your point above (that the situation in Pilates was inherently distinctive vs generic, rather than descriptive vs. generic) strikes me as right; but I just wanted to make the TM-geek observation that surnames are generally not treated as inherently distinctive.
Cheers and hope you are all well – Stacey
Supporting Barton’s view – the last sentence of the excerpt from the Cocksuckers case:
“To reiterate, the outcome of our decision is that Fox will remain free to use her mark in commerce. She will be unable, however, to call upon the resources of the federal government in order to enforce that mark.”
It’s a really interesting issue, but I think I disagree. If someone started selling Redskins T-shirts that were not a parody or commentary, i suspect that a court would find them infringing and/or counterfeit. I thought that the general consensus after the Redskins opinion was that the team had lost its registration, but probably not its common law rights. But what do I know? I guess the important thing is just to soften the language and make clear that the issue has never been addressed so remains an open question.