Trade Dress - How do you describe your trade dress?

Tetris

     Trade dress is a form of trademark protection and is protected by § 43 of the Lanham Act.  Two Pesos, Inc. v. Taco Cabana, Inc., 112 S.Ct. 2753 (1992).  Trade dress protects the overall commercial appearance of a "product" that indicates or identifies the source of that “product”.  Trade dress can be found in a product's design or configuration, or a product packaging.

     To establish trade dress, you must show two elements:  (1) the trade dress is not functional, and (2) the trade dress is inherently distinctive or that it has acquired secondary meaning.  Ashley Furniture Indus., Inc. v. Sangiacomo N.A. Ltd., 187 F.3d 363, 368 (4th Cir. 1999); Fun-Damental Too, Ltd. v. Gemmy Indus. Corp., 111 F.3d 993, 999 (2nd Cir 1997).

     Trade dress cannot protect features that are functional.  A 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."   Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995) (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n.10 (1982)).

     Whether trade dress is inherently distinctive or has acquired secondary meaning depends on what is being claimed.  It is important to note that most Circuit Courts of Appeals, apart from the Eighth Circuit, distinguish between trade dress claims for a product's design or configuration and a product's packaging.  Stuart Hall Co., Inc. v. Ampad Corp., 51 F.3d 780, 788 (8th Cir. 1995) (declining to create a distinction between protection of packaging and product configuration).  Because a product's design or configuration generally doesn't identify the source of the product, a trade dress claim for a product's design requires a showing of secondary meaning.  Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 216 (2000).  However, because labeling and packaging choices are virtually unlimited, a product's packaging trade dress typically will be inherently distinctive or require a showing of secondary meaning.  Fun-Damental, 111 F.3d at 1000.

     Thus, if you are identifying your trade dress, you would not want to describe it as follows:

[T]he combination of multiple features, including: the tool size; the shape of the handles; the shape of the gripping jaws including the selection, shape and placement of the gripping jaw features (needlenose, arcuate gripping surface and cutters); the mirror image of the tool handles; the brushed stainless steel finish on the handles; the selection, arrangement and shape of all of the various tool blades both individually and collectively; the combination and arrangement of all the above features; the proportional sizes of components in relation to each other; and, the type and appearance of the pivot joint on the pliers head.

Leatherman Tool Group, Inc. v. Cooper Indus., Inc., 199 F.3d 1009, 1011 (9th Cir. 1999).  As the Court found, this description violates the tenet that trade dress cannot protect features that are functional.  Id. at 1013.

     It is also important that you clearly articulate your trade dress:

The Petoskey trade dress incorporates large three-inch tubing, with a powdered cosmetic finish, bent in gentle turns that roll around the perimeter of the furniture which in combination with the various seating surfaces gives the viewer a floating or suspended feeling. 

Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 381-82 (2nd Cir. 1997).  The Court found that a "claim for site furniture which is at once massive, yet appears to float, is too abstract to qualify as trade dress".  Id.  Moreover, the plaintiff failed to identify the specific features that constitute its trade dress because the purported trade dress did not apply to all of the items in the Petroskey furniture line, and bent tubing was commonly used in outdoor furniture.

     Finally, because of the different treatment between product configuration and product packaging trade dress claims, you want to frame your trade dress, to the extent possible, as a product packaging claim:

Tetris Holding claims its trade dress is comprised of the following: "the brightly-colored Tetriminos, which are formed by four equally-sized, delineated blocks, and the long vertical rectangle playfield, which is higher than wide."

Tetris Holdings, LLC v. Xio Interactive, Inc., 863 F.Supp.2d 394, 415 (2012) (noting the trade dress claims were based on "the manner in which Mino advertised and packaged its game to potential users").
 
- Henry Park

updated on 10/1

No Budget No Problem! Three Fundamental Concepts To Build A Successful Startup Business

Three fundamental concepts for building a business are organization, intellectual property and focus.

1. Organization.

When companies look to purchase or to perform a commercial collaboration with a startup, one of the first items they examine is the company’s fundamental written agreements. It may seem unnecessary for an early stage startup, but fundamental agreements such as incorporation documents, operating agreements, business plans, and marketing plans are key to providing a basis for any collaboration.

Though these agreements may sound expensive and outside of the budget of the entrepreneur, they can be completed in a cost-efficient way that will return many-fold the investment, in time and money, in these agreements.  In particular, the return on investment will be (1) a reduction or elimination of internal disagreements based on the implementation of fundamental agreements that define the responsibilities of the founders, and (2) the ability to quickly and efficiently enter into commercial collaborations, and to obtain funding, if necessary.  A company prospectively looking to collaborate with a startup will want to review such agreements to ensure that there will be no problems regarding extraneous investors, friends or ex-workers that will arise later to claim that they own part of the business or part of the technology.

2.  Intellectual Property.

Intellectual property is a key element in the success of a startup. However, there are two issues that need to be addressed regarding intellectual property: (1) the costs involved in obtaining intellectual property and (2) recognizing intellectual property as a commercial asset. While the cost issue drives funds away from the startup, having commercial assets will drive funds to the startup. Thus, intellectual property is “a necessary evil” for any startup as the basis for its commercial assets.

Because intellectual property is a necessity, the entrepreneur must understand the costs and the risk/reward relationship of filing for an intellectual property right in the U.S. and other countries. In order to manage intellectual property costs, a strategy that provides cost-effective and efficiently obtained intellectual property is necessary from the earliest stage of the startup. An often overlooked aspect in developing this strategy is ensuring that the startup’s counsel understands the entire spectrum of any new technology, e.g., from initial disclosure of the technology to commercialization, and not only the preparation and filing of a patent application or other intellectual property right applications. Having this understanding will ensure a cost effective IP portfolio (important to any startup), and a portfolio that is continually positioned to discuss collaborations and commercialization, even at the early stages of the technology development core to the startup. 

All intellectual property is not the same. A startup needs high-quality intellectual property that will be commercially viable for various types of collaborations, e.g., a joint venture for the creation of additional intellectual property, a license, or as an asset in a merger or acquisition.  Intellectual property (and most particularly patents) have little or no value if they are not broad enough to cover the startup’s products and to ensure a presence in any industrial field. Moreover, haphazardly filing multiple patent applications without evaluating the value of such applications, can quickly drain the startup of valuable funds, and thereafter confuse the company’s business plan by focusing too broadly.

3. Focus.

After the startup’s fundamental agreements and intellectual property have been established, entrepreneurs should focus on commercialization of products and services, and on developing their technology. Entrepreneurs should implement a “feedback system” in the development and commercialization of their technology.  Specifically, marketing and commercializing intellectual property will provide comments and advice that can be evaluated to make any necessary adjustments for the marketing of a product or service, and the modification of intellectual property rights.

Core to a successful marketing plan is having direct marketing into the area of your product or service, and in recognizing the competition and potential collaborators. A common misunderstanding is that a startup company has to take the technology all the way to the product or service by itself. Getting collaborators and co-developers to support and expedite the development and commercialization of the technology will provide success. Although collaborators will take part of the profits or equity, most startups do not fail because of bad ideas; rather, they fail because they do not have a focused, cost-effective plan to move the technology from discovery to commercialization. Many companies start with important technology, but get bogged down in extraneous intellectual property, and in trying to take the technology to commercialization by themselves. This can be extremely difficult, as often many different experts may be needed.

Entrepreneus will find it a difficult sell when asking venture capitalists or angel investors for funding for salaries and development, while filing to provide details on how they intend to manage the journey from technology development to commercialization. This is a death knell for any startup trying to raise money, because it signals to potential investors that not all of the issues that need to be addressed have been recognized by the startup. Most often this results in a denial of any funding or investors obtaining large amounts of equity in the company (including the intellectual property) for basic funding amounts. 

Applying the three steps above will result in a focused approach to technology development and marketing and commercialization, and lead to an effective, efficient and successful tech startup.

- Joseph J. DiDonato

updated on 10/1

Copyright - A big proposed change in EU Copyright Law

     Yesterday, September 14th, European Union Commission President Jean-Claude Juncker gave a State of the Union speech and mentioned an "overhaul" of copyright law (link to speech). I'm not so sure it is an overhaul as much of tweaking of the system. The full text of the proposed revisions to the Copyright Law can be found at this link.

     There is one major change in the proposal - Article 13.




     This provision would require information society service providers to take measures, such as content recognition technologies (i.e., filtering) to prevent copyrighted content from being available on their systems. Information society service is a broad term defined as "any service normally provided for remuneration at a distance, by means of electronic equipment for the processing (including digital compression) and storage of data, at the individual request of a recipient of the service" (Directive 2000/31/EC, Directive on Electronic Commerce, whereas clause 17). Given that all service providers would be affected, it will be interesting to see how "public access" and "large amounts of works or other subject-matter uploaded by their users" are interpreted, because they could create substantial safe harbors.

     This is a big change compared to current EU law and US law. Under current laws, copyright holders bear the burden of policing service providers and requesting that any infringing content be pulled. Under the new EU proposal, the burden would shift to service providers.

- Henry Park

Updated 10/1

USPTO - The end is coming. How to authenticate without the Java plugin?

     Almost a year ago, Google Chrome and Mozilla Firefox announced that they would stop supporting plugins such as Java at the end of 2016. Why is plugin support for Java an issue?  Because the USPTO still uses the Java plugin to authenticate users for access to Private PAIR (Patent Application Information Retrieval system) and EFS-Web.

     Until today, the USPTO was silent about its plans to replace the Java plugin.  Today, it announced the alternative authentication method which should be available sometime in October 2016. 




      The USPTO's alternative method uses Java Web Start, which allows standalone Java software applications to be deployed over the Internet. Thus, the USPTO's solution to the plugin problem was to use Oracle's new technology to deploy Java applications.  One has to wonder whether this new solution is "better" than the solution used by WIPO, which is to issue user certificates.

- Henry Park

Trivia - The Relationship between Swiss and Turkish Law

     Kudos to my friend Basak Köklü for highlighting this tidbit.

     Turkey and Switzerland have related civil codes because on October 4, 1926, Turkey adopted the Swiss civil code with minor alterations. 

- Henry Park

Privacy - Facebook and data about you

     Privacy rights are a bigger issue in Europe than in the U.S., and this difference creates friction, e.g., Safe Harbor being invalidated.  It will be interesting to see whether any European data protection agencies decide to investigate Facebook about the amount of information it is collecting about its users from its own site, from information shared with a business, and through the use of third-party data brokers.

      Credit goes to the Washington Post for pointing out the amount of information Facebook collects about you.

      Facebook collects at least 98 data points about each user:

Targeting options for Facebook advertisers
1. Location
2. Age
3. Generation
4. Gender
5. Language
6. Education level
7. Field of study
8. School
9. Ethnic affinity
10. Income and net worth
11. Home ownership and type
12. Home value
13. Property size
14. Square footage of home
15. Year home was built
16. Household composition
17. Users who have an anniversary within 30 days
18. Users who are away from family or hometown
19. Users who are friends with someone who has an anniversary, is newly married or engaged, recently moved, or has an upcoming birthday
20. Users in long-distance relationships
21. Users in new relationships
22. Users who have new jobs
23. Users who are newly engaged
24. Users who are newly married
25. Users who have recently moved
26. Users who have birthdays soon
27. Parents
28. Expectant parents
29. Mothers, divided by “type” (soccer, trendy, etc.)
30. Users who are likely to engage in politics
31. Conservatives and liberals
32. Relationship status
33. Employer
34. Industry
35. Job title
36. Office type
37. Interests
38. Users who own motorcycles
39. Users who plan to buy a car (and what kind/brand of car, and how soon)
40. Users who bought auto parts or accessories recently
41. Users who are likely to need auto parts or services
42. Style and brand of car you drive
43. Year car was bought
44. Age of car
45. How much money user is likely to spend on next car
46. Where user is likely to buy next car
47. How many employees your company has
48. Users who own small businesses
49. Users who work in management or are executives
50. Users who have donated to charity (divided by type)
51. Operating system
52. Users who play canvas games
53. Users who own a gaming console
54. Users who have created a Facebook event
55. Users who have used Facebook Payments
56. Users who have spent more than average on Facebook Payments
57. Users who administer a Facebook page
58. Users who have recently uploaded photos to Facebook
59. Internet browser
60. Email service
61. Early/late adopters of technology
62. Expats (divided by what country they are from originally)
63. Users who belong to a credit union, national bank or regional bank
64. Users who investor (divided by investment type)
65. Number of credit lines
66. Users who are active credit card users
67. Credit card type
68. Users who have a debit card
69. Users who carry a balance on their credit card
70. Users who listen to the radio
71. Preference in TV shows
72. Users who use a mobile device (divided by what brand they use)
73. Internet connection type
74. Users who recently acquired a smartphone or tablet
75. Users who access the Internet through a smartphone or tablet
76. Users who use coupons
77. Types of clothing user’s household buys
78. Time of year user’s household shops most
79. Users who are “heavy” buyers of beer, wine or spirits
80. Users who buy groceries (and what kinds)
81. Users who buy beauty products
82. Users who buy allergy medications, cough/cold medications, pain relief products, and over-the-counter meds
83. Users who spend money on household products
84. Users who spend money on products for kids or pets, and what kinds of pets
85. Users whose household makes more purchases than is average
86. Users who tend to shop online (or off)
87. Types of restaurants user eats at
88. Kinds of stores user shops at
89. Users who are “receptive” to offers from companies offering online auto insurance, higher education or mortgages, and prepaid debit cards/satellite TV
90. Length of time user has lived in house
91. Users who are likely to move soon
92. Users who are interested in the Olympics, fall football, cricket or Ramadan
93. Users who travel frequently, for work or pleasure
94. Users who commute to work
95. Types of vacations user tends to go on
96. Users who recently returned from a trip
97. Users who recently used a travel app
98. Users who participate in a timeshare

- Henry Park

SSA - New authentication measures on their way

     This is an update to my August 2 and August 19th posts.

     I finally received an official e-mail notice from SSA concerning the switch from requiring two-factor authentication.



     As discussed earlier, hopefully, the SSA is working with its stakeholders on its "alternative" authentication method before introducing it, thus, preventing another self-inflicted wound.

 - Henry Park

Updated 10/1

Happy Labor Day Weekend

     As summer comes to a close, we wish everyone a safe and enjoyable Labor Day weekend.

- Henry Park and Joseph DiDonato

Reciprocity - New Jersey's official list

     This is an update to my earlier August 19th and April 18th posts.

     The Application Forms section of the New Jersey Board of Bar Examiner's website has been updated with information concerning admission by motion.  Among the updates is the current list of reciprocal states.

See link.


 - Henry Park