Despite two U.S. Supreme Court decisions several years ago that substantially restricted the conditions under which product configuration trademarks can be registered, the U.S. Patent and Trademark Office ("PTO") continues to receive a steady flow of trademark applications for three-dimensional product designs. In contrast to conventional trademarks such as names, words and logos, which are typically used on the product, labels and packaging, product configuration trademarks provide rights in the appearance of the product itself. But to what extent do product designs really function as trademarks? Recent court decisions demonstrate that establishing rights in and enforcing product configuration marks continues to be far more difficult than for other types of marks.
A trademark is any word, symbol or device that identifies the source of a product and distinguishes the product from those of others. The PTO has taken an expansive view of what may constitute a trademark. It has granted registrations for many "unconventional" trademarks, including containers (e.g., Coca Cola bottle); ornamental designs (Corningware blue flower design); the external appearance of a skyscraper (Empire State Building); colors (the color purple for AstraZeneca's Nexium and Prilosec pharmaceuticals); sounds (roar of the MGM lion) and even scents (cherry scent for synthetic engine lubricants). In addition, the PTO has granted numerous registrations for three-dimensional product configurations for a wide variety of consumer and industrial goods.
In the U.S., there is no requirement that trademarks be registered to be legally enforceable. Bona fide use of a mark for goods or services in commerce is all that is required to establish protectible common law rights. However, trademark registration provides substantial benefits over common law rights in a mark, including that the registration is prima facie evidence of the validity and ownership of the mark and of the registrant's right to use the mark exclusively in commerce throughout the country. This provides a strong incentive for manufacturers to register trademarks, including product designs marks.
At the time that the Supreme Court decided Wal-Mart Stores, Inc. v. Samara Brothers in 2000 (529 U.S. 205), there was an onslaught of claims to trademark rights in the most common of household items, such as lamps, door knobs, bathroom scales, flashlights and many other similar products. There was great doubt, both in the business and legal communities, as to whether the three-dimensional design and appearance of such utilitarian goods really function as trademarks. The Supreme Court drew a distinction between product design and product packaging, pointing out that, in contrast to the packaging for a product, the design of the product itself usually does not identify the source of the product, but rather is the result of functional or aesthetic considerations.
Prior to Wal-Mart, applicants were free to claim that their product configuration marks were "inherently distinctive," which permitted applications to sail through the PTO with no proof that the design actually functions as a trademark, i.e., that it denotes the source of the product. The concept of inherent distinctiveness when applied to product configuration marks was amorphous - how does one determine whether the shape of a doorknob or flashlight is "inherently distinctive?" The Wal-Mart decision changed the law with respect to product configuration marks - applicants have since been required to prove acquired distinctiveness in the claimed design, because the marks cannot, as a matter of law, be inherently distinctive.
To establish acquired distinctiveness, also referred to as secondary meaning, a manufacturer must show that in the minds of the public, the primary significance of a product feature is to identify the source of the product rather than the product itself. This entails the presentation of evidence such as length of use, advertising expenditures, sales figures and other concrete factors. Besides imposing an evidentiary standard far stricter than a claim for inherent distinctiveness, secondary meaning usually requires that the mark be used for an extensive period of time, thereby diminishing the prospect of registering newly or recently created product designs as trademarks.
The Functionality Doctrine
In 2001, the Supreme Court decided TrafFix Devices v. Marketing Displays, Inc. (532 U.S. 23). The case concerned the doctrine of functionality, which bars trademark protection for functional product features. The functionality doctrine is intended to encourage legitimate competition by maintaining a proper balance between trademark and patent law. A mark is functional if it is essential to the use or purpose of a product or if it affects the cost or quality of the product. Functionality is particularly applicable to product configuration marks because product features and shapes are often related to the use, purpose or cost of manufacture of the product. The Supreme Court in TrafFix held that if the product features sought to be protected as a mark were the subject of an expired utility patent, this "adds great weight to the statutory presumption that features are deemed functional until proven otherwise" and that one who seeks such protection "must carry the heavy burden of showing that the feature is not functional."
The Continuing Onslaught Of Applications
The Wal-Mart and TrafFix decisions have reined in the unbridled expansion of product configuration trademark claims, both in the PTO and in federal litigation, but this has not deterred companies from trying to register and assert rights in product design marks. The PTO received scores of applications for product configuration trademarks in 2005 for a wide variety of both consumer and industrial products. The marks described in some of these applications read more like utility patents than trademarks: "product configuration for an electromagnetic transducer," "hand operated reciprocating pumpsfor attachment to containers for use in dispensing non-pressurized fluids," and the "configuration of an immunodiagnostic testing device."
There were also a number of new applications for common household items last year, such as a can opener, a ruler and a crib. One company applied to register "the configuration of a piece of pet food." More ambitious trademark applications were filed by members of the automotive industry, including applications by Dakota Motorcycles U.S.A. Inc. for "the right side of the engine on a motorcycle"; Volvo for an automobile tail light configuration; and another for an entire motor vehicle (a sport utility vehicle/truck combination) by General Motors.
Not surprisingly, most of these applications were refused, either on the ground of lack of secondary meaning or that the product design is functional or both. Nevertheless, companies persist in trying to secure registration of product designs because of the advantages that a U.S. trademark registration can provide in a competitive marketplace.
The Benefits Of Registration
A trademark registration will usually represent the only tangible evidence of legal rights in a product design. In the case of traditional word marks or logos, the owner can communicate its rights or claimed rights to the public by using the and symbols next to the marks on packaging, labeling and in advertising. But there are no practical means of doing so with product configuration marks and therefore competitors and the public are less likely to be aware of such claims and legal rights. The registration certificate thus provides a "validation" of trademark rights that may otherwise be unknown or appear circumspect to competitors.
Also, there can be substantial commercial benefits to the owner of a trademark registration beyond courtroom evidentiary advantages. Often, a trademark registration enclosed with a strongly worded "cease and desist" letter is effective to stop a competitor from selling an accused product or to force it to change the appearance of a product. An assertion of the same rights without an accompanying registration certificate is unlikely to wield the same force or achieve the same results. In addition, trademark registration could provide other advantages that may never be known by the owner. For example, companies that conduct trademark searches before designing or introducing a new product may be less likely to introduce and sell a product if it closely resembles one shown in a trademark registration.
While the existence of a trademark registration may bolster one's ability to affect competitors' activities out of court, it does not ensure success in an infringement action to enjoin the sale of a competitive product. On the contrary, enforcing rights in product configuration trademarks has proven to be more difficult than for other types of marks and plaintiffs in recent product configuration infringement actions have fared poorly.
Notwithstanding the impediments, there is no indication that companies will stop trying to claim and protect trademark rights in product configurations. Those who contemplate making the effort, whether through registration in the PTO or infringement actions in court, should consider the following points:
1. The product should be on the market for at least several years, such that there has been sufficient time for distinctiveness in the design to be acquired;
2. Be prepared to offer strong evidence of acquired distinctiveness, including the nature and extent of advertising and promotional efforts, successful sales figures, unsolicited media or trade coverage of the product, and even a survey;
3. Be prepared to demonstrate non-functionality, including technical evidence that the product design is not utilitarian or essential to the function of the product and evidence that other product designs are available to competitors without affecting the cost of manufacture; and
4. Be mindful that if advertising or other materials directed to the public or the trade tout benefits of the product's design, or if the product design features sought to be protected are or were the subject of a utility patent, there is a strong likelihood that the product design is functional.
Darren W. Saunders is a Partner at Kirkpatrick & Lockhart Nicholson Graham LLP in New York. A version of this article first appeared in the May 8, 2006 issue of The New York Law Journal.