© 2014 Charles Colman, Acting Assistant Professor at NYU School of Law This presentation grew out of the author’s

work on a short essay, “The TTAB’s Dangerous Dismissal of ‘Doubt’” (Harv. J.L. & Tech., Nov. 12, 2013; available for download at http://ssrn.com/abstract=2349076). The presentation was first given at NYU’s “Tri-State IP Workshop” on Jan. 10, 2014; it is the basis for a full-length work-in-progress on the same topic. Offers to publish the finished article are, of course, welcome.

ABERCROMBIE “DISTINCTIVENESS” SPECTRUM
Created for (and best suited to) word marks: Generic “incapable | | | [secondary meaning required] of serving as | a trademark” | Descriptive | | | | | [no secondary meaning required] Suggestive | Arbitrary | Fanciful

(from Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976))

HOW IS “GENERICISM” DETERMINED FOR WORD MARKS?
“A generic mark ‘refers to the genus or class of which a particular product is a member,’ and such a mark ‘can never be protected.’” Ale House Management v. Raleigh Ale House, 205 F.3d 137, 140 (4th Cir. 2000) (quoting Ashley Furniture Indus., Inc. v. Sangiacomo N.A. Ltd., 187 F.3d 363, 369 (4th Cir. 1999)).
“AHM has failed, however, to present any evidence that ‘ale house’ does not refer to institutions that serve both food and beer.... On the other hand, Raleigh Ale House presented extensive evidence, including citations to newspapers, dictionaries, books, and other publications, that the term ‘ale house’ is generic, referring to several types of facilities. See Glover v. Ampak, Inc., 74 F.3d 57, 59 (4th Cir. 1996) (endorsing use of similar sources of evidence to establish that a term is generic).”

THE “GENUS” TEST IS NOT AN OBJECTIVE LINGUISTIC INQUIRY
See Desai & Rierson, Confronting the Genericism Conundrum, 28 CARDOZO L. REV. 1790, 1825, 1827 (2006) “Specifically put in the context of the primary significance test, the question becomes whether ‘the primary significance of the trademark is to describe the type of product rather than the producer.’… Although the test may seem simple in its articulation (once one gets past the difficulty of making a trademark talk and answer questions), it has proved difficult in application…. In many cases . . . words or terms are found to be generic (i.e., the name of a product class) when, at least to the naked eye, they appear to be descriptive—that is, they describe the attributes of the good or service to which they are attached: e.g., Lite Beer, Filipino Yellow Pages, Blinded Veterans Association, Warehouse Shoes….”

WORD-MARK GENERICISM IS ACTUALLY A PROXY FOR “LINGUISTIC FUNCTIONALITY”
See Desai & Rierson, Confronting the Genericism Conundrum, 28 CARDOZO L. REV. 1790, 1819 (2006) “Modern courts refuse to extend trademark protection to generic words or terms because they are concerned that doing so would negatively impact competition….” BOTTOM LINE: Although the genericism doctrine is intended to avoid the anticompetitive effects of granting a single party exclusive rights to words or phrases that are “too descriptive,” trademark-law doctrine does not require trademark-infringement defendants or the USPTO to conduct an empirical evaluation of the actual or likely effect on marketplace competition. Genericism serves as a common-sense-based proxy for a “linguistic functionality” inquiry that courts would otherwise have to make. No such doctrine exists. Trademark law does not require sellers of “green apples” to prove that a competitor’s exclusive rights in the phrase “green apples” for such goods would negatively impact competition, because we all share that intuition.
But see Rosetta Stone Ltd. v. Google, Inc., 730 F.Supp.2d 531, 546 (E.D. Va. 2010), overturned in relevant part, 676 F.3d 144 (4th Cir. 2012) “In terms of encouraging competition, the keywords also serve an advertising function that benefits consumers who expend the time and energy to locate particular information, goods, or services, and to compare prices. Google's search engine provides consumers with a highly useful means of searching the internet for products and competitive prices. If Google is deprived of this use of the Rosetta Stone Marks, consumers would lose the ability to rapidly locate potentially relevant websites that promote genuine Rosetta Stone products at competitive prices. Consequently, because the Court is persuaded that Google's particular use of trademarked keywords as triggers for paid advertisements is functional, and no prohibition exists otherwise, the Court holds that the functionality doctrine prevents a finding of infringement.

SOME COURTS HAVE TRIED TO APPLY THE “GENUS” TEST TO DETERMINE WHEN PRODUCT-DESIGN TRADE DRESS IS GENERIC
See, e.g., Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 115 (2d Cir. 2001): “[E]ven a showing of secondary meaning is insufficient to protect product designs that are overbroad or ‘generic’—’those that “refe[r] to the genus of which the particular product is a species”.’ Jeffrey Milstein, 58 F.3d at 32, 33 (quoting Two Pesos, 505 U.S. at 768). This check on monopoly rights limits all marks, but for two reasons it is particularly important in cases of product design.”

How does one determine when product-design trade dress “refers to the genus of which the particular product is a species”? Clearly, one cannot enforce “trade dress” rights in a shirt-shaped shirt, but beyond that...

SOME COURTS HAVE RECOGNIZED THAT THE “GENUS” TEST IS INAPT
Ale House Management, Inc. v. Raleigh Ale House, Inc., 205 F.3d 137, 142 (4th Cir. 2000): “As with generic trade names, the trademark laws do not protect a generic trade dress. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768–70(1992) (upholding as protectable trade dress the distinctive, nonfunctional appearance of a restaurant). Trade dress should be considered generic if ‘well-known’ or ‘common,’ ‘a mere refinement of a commonly-adopted and well-known form of ornamentation,’ or a ‘common basic shape or design,’ even if it has ‘not before been refined in precisely the same way.’ Ashley Furniture, 187 F.3d at 371 (internal quotation marks omitted). On the other hand, trade dress is not generic if it is ‘unique or unusual in the particular field at issue.’ Id. (internal quotation marks omitted).”

DISCUSSION OF “GENERIC TRADE DRESS” QUICKLY BLEEDS INTO TALK OF (AESTHETIC) “FUNCTIONALITY”
Fun-Damental Too, Ltd. v. Gemmy Industries Corp., 111 F.3d 993, 1000 (2d Cir. 1997) (pre-Samara Bros.) “Yet trade dress protection has limits. A trade dress that consists of the shape of a product that conforms to a well-established industry custom is generic and hence unprotected.” . . . [A] specific trade dress must still be evaluated to determine whether it is so distinctive as to point to a single source of origin and thereby be entitled to Lanham Act protection.” Malaco Leaf, AB v. Promotion In Motion, Inc., 287 F.Supp.2d 355, 363 (S.D.N.Y. 2003) “[D]efendants argue that Malaco’s product configuration in its Swedish Fish is unprotectable because it is (1) generic, and (2) functional…. Defendants argue that Malaco’s Swedish Fish product design is not entitled to protection because it is a generic, common design that is used extensively by third parties in the confectionery industry. (Def.’s Br. at 4.) This Court agrees that the generic design of Malaco’s Swedish Fish, along with extensive third party use of the design and Malaco’s failure to police infringing third-party uses, renders the Swedish Fish design generic and unprotectable. . . . [Further,] the other product design features such as the head, tail, scale pattern and eye are necessary attributes to portray any fish. Notably, nearly every third party marketing gummy fish-shaped candy portrays identical features. (Def.'s Ex. C.) Therefore, since Malaco's product design trade dress ‘involv[es] an aesthetic feature, the dress is ... functional [since] the right to use it exclusively ‘would put competitors at a significant non-reputation-related disadvantage.”’”

WHAT ABOUT WHEN THERE IS NO “INDUSTRY CUSTOM”? THERE’S THE RUB.
Ale House Management v. Raleigh Ale House, 205 F.3d 137, 142 (4th Cir. 2000): “Trade dress should be considered generic if ‘well-known’ or ‘common,’ ‘a mere refinement of a commonly-adopted and well-known form of ornamentation,’ or a ‘common basic shape or design,’ even if it has ‘not before been refined in precisely the same way.’” ! How does one determine whether a shape or design is “common” or “basic”? With no industry custom to consult, courts must assess the likely anticompetitive effect of recognizing particular trade-dress rights. At least in recent years—judges have often tried to do so under the rubric of “aesthetic functionality.”

FRANCO & SONS, INC. V. FRANEK, 615 F.3d 855, 860, 861 (7th Cir. 2010)

“The composition of the relevant market matters. But the more rudimentary and general the element - all six-sided shapes rather than an irregular, perforated hexagon; all labels made from tin rather than a specific tin label; all shades of the color purple rather than a single shade - the more likely it is that restricting its use will significantly impair competition…. Franek's towel is of this ilk. He has trademarked the ‘configuration of a round beach towel.’ Every other beach towel manufacturer is barred from using the entire shape as well as any other design similar enough that consumers are likely to confuse it with Franek's circle (most regular polygons, for example).”

FRANEK (CONT.)
“The chief difficulty is distinguishing between designs that are fashionable enough to be functional and those that are merely pleasing…. There are only so many geometric shapes; few are both attractive and simple enough to fabricate cheaply. Cf. Qualitex, 514 U.S. at 168-69, 115 S.Ct. 1300 (functionality doctrine invalidates marks that would create color scarcity in a particular market). And some consumers crave round towels-beachgoers who prefer curved edges to sharp corners, those who don't want to be “square,” and those who relish the circle's simplicity. A producer barred from selling such towels loses a profitable portion of the market. The record does not divulge much on these matters, but any holes in the evidence are filled by the TrafFix presumption that Franek's mark is functional, a presumption he has failed to rebut.

WHEN/HOW CAN THE RECORD “DIVULGE MUCH” ON AESTHETIC FUNCTIONALITY WHERE “INDUSTRY CUSTOM” IS UNAVAILING?

2012: THE SECOND CIRCUIT SPLITS THE BABY
The Second Circuit rejected District Court Judge Marrero’s ruling that, because of “aesthetic functionality,” all colors must remain available to fashion designers in order to compete effectively in their industry. Marrero had, in effect, created an industry-specific “proxy” for generic product-design trade dress—but by grounding his ruling in the controversial “aesthetic functionality” doctrine, he caused a backlash—and, the Second Circuit determined, ran afoul of Qualitex. The presiding Second Circuit panel wrote: “Because aesthetic function and branding success can sometimes be difficult to distinguish, the aesthetic functionality analysis is highly fact-specific.” But in cases where there is no industry custom to examine, what facts can realistically be adduced? Only because the registration was not yet “incontestable,” the Second Circuit was able to find that “the record fails to demonstrate that the secondary meaning of the Red Sole Mark extends to uses in which the sole does not contrast with the upper—in other words, when a red sole is used on a monochromatic red shoe.”

IN RE BOTTEGA VENETA INT’L S.A.R.L.

IN RE BOTTEGA VENETA (CONT.)
In its application, filed in June 2007, Bottega Veneta stated: “The mark consists of Interlaced woven strips of leather arranged in a distinctive repeating pattern that is used over all or substantially all of the goods.” By the time the TTAB ruled on the matter, Bottega had agreed to limit the scope to “[a] mark consist[ing] of a configuration of slim, uniformly-sized strips of leather, ranging from 8 to 12 millimeters in width, interlaced to form a repeating plain or basket weave pattern placed at a 45degree angle over all or substantially all of the goods.” The TTAB ruled: “In order to show a competitive need for the applied-for weave design, the examining attorney has made of record over 1500 pages of evidence, consisting primarily of advertisements from third-party websites depicting items having weave designs. The bulk of this evidence relates to the use of weave designs on handbags and shoes…. In cases involving other grounds for refusal, there is a policy that doubt should be resolved in favor of publication of the mark. . . . In a case involving the issue of aesthetic functionality, where the question to be resolved is competitive need, we think that adopting this principle is particularly appropriate, since publishing the mark will allow competitors to come forward to assert and prove that they do have a competitive need to use the proposed mark if, indeed, they have such a need.

WHAT WOULD THIS REGISTRATION LIKELY COVER?

WHAT ELSE DOES BOTTEGA VENETA WANT TO “OWN”?

GENERIC TRADE DRESS: SHAPE, COLOR, TEXTURE
Product-design trade dress should be considered “generic” if: (1)! A single color covers all, or substantially all, of the consumer- or audience-facing portion of the product; or (2)! A single basic or regularized shape makes up all, or substantially all, of the consumer- or audience-facing portion of the product; or (3)! A single texture (defined to include material, regular patterns, etc.) covers all, or substantially all, of the consumer- or audiencefacing portion of the product. ! This test would serve as a proxy for aesthetic functionality, avoiding doctrine distortion, undue evidentiary burdens, controversy.

REMINDERS
My framework is designed to be relatively narrow; that productdesign trade dress is not “generic” does not mean it is not/does not: (1)! “merely ornamental” (per Trademark Office and some federal case law); (2)! otherwise require “secondary meaning” (per Samara Bros.); (3)! a poor candidate for a “likelihood of confusion”; or (4)! aesthetically functional

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