Intellectual Property Law 134 Trademarks

Prof. Vicente B. Amador

Comparative Table
Copyright Original intellectual creations in the literary or artistic domain Originality Patents Trademarks

Technical solution Visible sign of a problem in capable of any field of human distinguishing activity goods or services of enterprise Novelty, inventive Distinctiveness step and industrial applicability

Comparative Table
Reproduction, Making, using, dramatization, selling, offering first public for sale and distribution, importing rental, public display, public performance other communication to public Use in commerce without consent of a mark or a dominant feature in connection with sale, offering for sale, distribution, advertising in a manner likely to cause confusion

Comparative Table
From creation without any formality From filing, From filing, publication, grant publication, grant

During lifetime Twenty years fromTen years and 50 years after filing date renewable without death limitation

Stimulation of Promotion of Protection of artistic creativity innovation for free goodwill and the for the public goodexploitation public against confusion

Section 121.1."Mark" means any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods; (Sec. 38, R.A. No. 166a)

Is the MGM Roaring Lion registrable as a trademark in the Philippines? Is the Harley Davidson roaring engine registrable as a trademark in the Philippines?

In what ways is a collective mark different from a trademark? Section 121.2. "Collective mark" means any visible sign designated as such in the application for registration and capable of distinguishing the origin or any other common characteristic, including the quality of goods or services of different enterprises which use the sign under the control of the registered owner of the collective mark; (Sec. 40, R.A. No. 166a)

How are trademarks classified based on their distinctiveness? Spectrum of Distinctiveness • Generic – no trademark significance, cannot be exclusively appropriated except as a part of an otherwise composite mark, and even then must be disclaimed, e.g, Kamiseta, Pancake House • Descriptive – tells us the intended purpose, function, use,size, desirable characteristics of goods, nature of goods or effects upon users,

e.g., T-JOISTS for floor and roof systems; selflaudatory marks like TASTY for bread, CHAP STICK for lip balm; change of form notwithstanding, SPECS for spectacles, DYANSHINE for shoe polish from dye and shine; KWIKSTART for car batteries; but may be registrable upon proof of secondary meaning • Suggestive – indirect or vague reference to information about the product and requires a

thought process, ROACH MOTEL for cockroach trap, COPPERTONE for tan oil, PLAYBOY for magazine, CYCLONE for wire fence, STRONGHOLD for nails • Arbitrary or Fanciful – usually coined words, ROLEX for watches, KODAK for cameras

Why Distinctiveness Matters Pearl & Dean (Phil.), Incorporated vs. Shoemart, Incorporated, and North Edsa Marketing, Incorporated, G.R. No. 148222, August 15, 2003 Issue: TM infringement, Non-distinctive mark Facts: 1. P&D manufactures advertising display units or light boxes, which utilize specially printed posters sandwiched between plastic sheets and illuminated with back lights. 2. It secured a TM registration for "Poster Ads" which petitioner's president said was a contraction of "poster advertising."

3. But the goods covered were "stationeries such as letterheads, envelopes, calling cards and newsletters," which P&D did not actually manufacture. The SC held: 1. The trademark registration did not cover poster ads. If at all, the cause of action should have been for unfair competition, a situation which was possible even if P & D had no registration. 2. Nonetheless, respondents are not liable for unfair competition.

3. There was no evidence that P & D's use of "Poster Ads" was distinctive or has been associated by the public with P&D by reason of long and exclusive use in its business. "'Poster Ads' was too generic a name so it was difficult to identify it with any company. Hence, in the mind of the public, the goods and services carrying the trademark "Poster Ads" could not be distinguished from the goods and services of other entities. 4. "Poster Ads" cannot acquire secondary meaning.

SOCIETE DES PRODUITS NESTLE, S.A. and NESTLE PHILIPPINES, INC. vs. COURT OF APPEALS and CFC CORPORATION, G.R. No. 112012. April 4, 2001. Nestle’s Marks: MASTER ROAST and MASTER BLEND." CFC’s Marks: "FLAVOR MASTER" Nestle filed notice of opposition to CFC’s application for FLAVOR MASTER CFC argued that its trademark, FLAVOR MASTER, is not confusingly similar with the former's trademarks, MASTER ROAST and MASTER BLEND. 1. MASTER is either a generic or descriptive word Other words used with the trademarks are very different from each other — in meaning, spelling, pronunciation, and sound.

Bureau of Patents denied CFC’s trademark application, but CA reversed its decision and ruled in favor of CFC. CA held that the physical discrepancies between appellant CFC's and appellee's respective logos are so ostensible that the casual purchaser cannot likely mistake one for the other. Supreme Court reversed the CA: 1. The Court of Appeals applied some judicial precedents which are not on all fours with this case. 2. In infringement or trademark cases in the Philippines, no set rules can be deduced in ascertaining whether one trademark is confusingly similar to or is a colorable imitation of another. Each case must be decided on its own merits.

3. The cases cited by the Court of Appeals to justify the application of the totality or holistic test to this case are inapplicable, the factual circumstances being substantially different. BIOFERIN and BUFFERIN for pains caused headaches and colds are spelled and pronounced differently and are prescribed by physicians ALACTA for goods under Class 6 for pharmaceutical and nutritional preparation is distinguishable from ALASKA for goods under Class 47 for food ingredients. The latter does not require prescription. 4. "The determination of whether two trademarks are indeed confusingly similar must be taken from the viewpoint of the ordinary purchasers who are, in general, undiscerningly rash in buying the more common and less expensive household products like coffee, and are therefore less inclined to closely examine specific details of similarities and dissimilarities between competing products."

5. MASTER is the dominant feature of opposer's mark. MASTER is printed predominantly on the label and emphasized in TV, radio and printed advertising materials with personalities like Robert Jaworski and Atty. Ric Puno Jr., who are given the titles Master of the Game and Master of the Talk Show. 6. In addition, the word "MASTER" is neither a generic nor a descriptive term. As such, said term can not be invalidated as a trademark and, therefore, may be legally protected. Rather, the term "MASTER" is a suggestive term brought about by the advertising scheme of Nestle. 7. The term "MASTER", therefore, has acquired a certain connotation to mean the coffee products MASTER ROAST and MASTER BLEND produced by Nestle. As such, the use by CFC of the term "MASTER" in the trademark for its coffee product FLAVOR MASTER is likely to cause confusion or mistake or even to deceive the ordinary purchasers.

What elements of this art design are registrable as trademarks and how do you classify them in terms of distinctiveness ?

What elements in this pictorial illustration are registrable as trademarks in the Philippines and how do you classify them in terms of distinctiveness?

Trademarks, Patents and Copyright as Subjects of Commercial Transactions SECTION 4. Definitions. - 4.1. The term "intellectual property rights" consists of: a) Copyright and Related Rights; b) Trademarks and Service Marks; c) Geographic Indications; d) Industrial Designs; e) Patents; f) Layout-Designs (Topographies) of Integrated Circuits; and g) Protection of Undisclosed Information (n, TRIPS).

4.2. The term "technology transfer arrangements" refers to contracts or agreements involving the transfer of systematic knowledge for the manufacture of a product, the application of a process, or rendering of a service including management contracts; and the transfer, assignment or licensing of all forms of intellectual property rights, including licensing of computer software except computer software developed for mass market.

Section 150. License Contracts. – Any license contract concerning the registration of a mark, or an application therefor, shall provide for effective control by the licensor of the quality of the goods or services of the licensee in connection with which the mark is used. If the license contract does not provide for such quality control or if such quality control is not effectively carried out, the license contract shall not be valid.

Technology Transfer Arrangement Section 4.2. The term "technology transfer arrangements" refers to contracts or agreements involving the transfer of systematic knowledge for the manufacture of a product, the application of a process, or rendering of a service including management contracts; and the transfer, assignment or licensing of all forms of intellectual property rights, including licensing of computer software except computer software developed for mass market.

Requirement for Enforceability Section 92. Non-Registration with the Documentation, Information and Technology Transfer Bureau. - Technology transfer arrangements that conform with the provisions of Sections 86 and 87 need not be registered with the Documentation, Information and Technology Transfer Bureau. Non-conformance with any of the provisions of Sections 87 and 88, however, shall automatically render the technology transfer arrangement unenforceable,

unless said technology transfer arrangement is approved and registered with the Documentation, Information and Technology Transfer Bureau under the provisions of Section 91 on exceptional cases. (n) Don’ts of IP Licensing SECTION 87. Prohibited Clauses. - Except in cases under Section 91, the following provisions shall be deemed prima facie to have an adverse effect on competition and trade:

87.1. Those which impose upon the licensee the obligation to acquire from a specific source capital goods, intermediate products, raw materials, and other technologies, or of permanently employing personnel indicated by the licensor; 87.2. Those pursuant to which the licensor reserves the right to fix the sale or resale prices of the products manufactured on the basis of the license;

87.3. Those that contain restrictions regarding the volume and structure of production; 87.4. Those that prohibit the use of competitive technologies in a non-exclusive technology transfer agreement; 87.5. Those that establish a full or partial purchase option in favor of the licensor; 87.6. Those that obligate the licensee to transfer for free to the licensor the inventions or

improvements that may be obtained through the use of the licensed technology; 87.7. Those that require payment of royalties to the owners of patents for patents which are not used; 87.8. Those that prohibit the licensee to export the licensed product unless justified for the protection of the legitimate interest of the licensor such as exports to countries where exclusive licenses to manufacture and/or distribute the licensed product(s) have already been granted;

87.9. Those which restrict the use of the technology supplied after the expiration of the technology transfer arrangement, except in cases of early termination of the technology transfer arrangement due to reason(s) attributable to the licensee; 87.10.Those which require payments for patents and other industrial property rights after their expiration, termination arrangement;

87.11.Those which require that the technology recipient shall not contest the validity of any of the patents of the technology supplier; 87.12.Those which restrict the research and development activities of the licensee designed to absorb and adapt the transferred technology to local conditions or to initiate research and development programs in connection with new products, processes or equipment;

87.13.Those which prevent the licensee from adapting the imported technology to local conditions, or introducing innovation to it, as long as it does not impair the quality standards prescribed by the licensor; 87.14.Those which exempt the licensor for liability for non-fulfillment of his responsibilities under the technology transfer arrangement and/or liability arising from third party suits brought about by the use of the licensed product or the licensed technology; and 87.15.Other clauses with equivalent effects. (Sec. 33-C (2), R.A 165a)

Do’s of IP Licensing SECTION 88. Mandatory Provisions. - The following provisions shall be included in voluntary license contracts: 88.1. That the laws of the Philippines shall govern the interpretation of the same and in the event of litigation, the venue shall be the proper court in the place where the licensee has its principal office;

88.2. Continued access to improvements in techniques and processes related to the technology shall be made available during the period of the technology transfer arrangement; 88.3. In the event the technology transfer arrangement shall provide for arbitration, the Procedure of Arbitration of the Arbitration Law of the Philippines or the Arbitration Rules of the United Nations Commission on International Trade Law (UNCITRAL) or the Rules of Conciliation and

Arbitration of the International Chamber of Commerce (ICC) shall apply and the venue of arbitration shall be the Philippines or any neutral country; and 88.4. The Philippine taxes on all payments relating to the technology transfer arrangement shall be borne by the licensor. (n)

Exceptions to the Don’ts and Do’s SECTION 91. Exceptional Cases. - In exceptional or meritorious cases where substantial benefits will accrue to the economy, such as high technology content, increase in foreign exchange earnings, employment generation, regional dispersal of industries and/or substitution with or use of local raw materials, or in the case of Board of Investments, registered companies with pioneer status, exemption from any of the above requirements may be allowed by the Documentation, Information and Technology Transfer Bureau after evaluation thereof on a case by case basis. (n)

Not All Marks are Created Equal

You can’t go wrong with a mark like ROLEX Montres Rolex, S. A. vs. Rolex Scientific Corporation, SEC Decision, April 28, 2004 Issue: Unauthorized use of Rolex trademark and trade name Facts: 1. Petitioner is the registered owner of the trademark ROLEX for watches in the Phils. and elsewhere. ROLEX is used as a trade name. 2. ROLEX trademark is registered in numerous countries worldwide. It is used as part of the corporate name of a Rolex subsidiary in the Phils.

3. Respondent used and registered ROLEX as part of its corporate name in the Phils. ahead of the Rolex subsidiary. Respondent manufactures laboratory supplies. Respondent claims that confusion is unlikely because it is using ROLEX only as part of its corporate name, but not as a trademark. Held: 1. Under Sec. 37 of TM Law (and now Sec. 165 of IP Code), trade names are protected against subsequent use by a third party in a manner likely to mislead the public.

2. Sec. 18 of Corp. Code also protects the registered corporate names of Rolex companies in the Phils. A corporation’s right to use its corporate name is a property right, which it may protect against the whole world. 3. The ROLEX name and mark is known worldwide as a leading brand or name for timepieces. It is a world famous mark. 4. Respondent’s argument that confusion is not likely is unacceptable because “what is sought to be protected is not the product alone, but the trade name itself of petitioner.

5. The protection to which the prior user of a corporate name is entitled is not limited to guarding its goods or business from actual market competition with identical or similar products of the parties but extends to all cases in which the use of the junior appropriator of the name is likely to lead to confusion as to source, as where prospective purchasers would be misled into thinking that the complaining corporation has extended its business into the field, or is in any way connected with the activities of the infringer; or when it forestalls the normal expansion of its business.

Some Marks are in a Class Above all the Rest

If you have not heard of Intel, you don’t belong to this century !!!

Everybody Loves Microsoft!!!

You can’t live without it!!!

Why it is given special treatment Pribhdas J. Mirpuri .vs. Court of Appeals, Director of Patents and the Barbizon Corporation, G.R. No. 114508. November 19, 1999 Issue: Well-known mark Facts: 1. Escobar applied with the BPTT for the registration of the trademark "Barbizon" for use in brassieres and ladies undergarments. She claimed use of the mark since 1970. 2. Barbizon opposed the application on the basis of its use of “Barbizon” for apparel. 3. Escobar prevailed but her registration lapsed because she failed to file affidavit of use.

4. Barbizon opposed Escobar’s re-application. Opposition was based on new grounds: fraudulent registration in 1974, violation of Art. 189 (3) the RPC, protection of well-known mark under Art. 6bis of Paris Convention SC held: 1. Opposition is not barred by res judicata because while the first opposition was only based on claim of confusing similarity second opposition was based on new grounds not raised in the first case. 2. Barbizon’s opposition is anchored on protection of well-known mark Article under 6bis of the Paris Convention

3. The “Barbizon” trademark is well-known because: (a) It has been used as early as 1933 on products such as robes, pajamas, lingerie, nightgowns and slips; (b) It was registered with the USPO in 1934 and 1949; and variations of the same trademark, i.e., "BARBIZON" with Bee design and "BARBIZON" with the representation of a woman were also registered with the USPO in 1961 and 1976; (c) It has been used in the Philippines and in many countries all over the world for over forty years. (d) "Barbizon" products have been advertised in international publications and the marks registered in 36 countries worldwide;

Section 123. Registrability. A mark cannot be registered if it:* (e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services:

Provided, That in determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark;

SECTION 123.Registrability. A mark cannot be registered if it:* (f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: Provided,

That use of the mark in relation to those goods or services would indicate a connection between those goods or services, and the owner of the registered mark: Provided further, That the interests of the owner of the registered mark are likely to be damaged by such use;

Par (e) covers situation where: •a mark is considered by Philippine authorities to be well-known internationally and in the Phils. •the mark may or may not be registered in the Phils. •the mark is used for identical or similar goods and services to those of the rival user •the well-known mark bars the rival mark

Par (f) covers situation where: •a mark is considered well-known internationally and in the Phils. •such mark is also registered in the Phils. •the goods or services for which the mark is registered are not similar to those in respect of which rival mark is applied for •well-known mark bars the rival mark if “connection” with and “prejudice” to owner of mark are shown

Rule102. Criteria. In determining whether a mark is well known, the following criteria or any combination thereof may be taken into account: (a) The duration, extent and geographical area of any use of the mark, in particular, the duration, extent and geographical area of any promotion of the mark, including the advertising or publicity and the presentation at fairs, or exhibitions, of the goods and services

to which the mark applies; (b) the market share, in the Philippines and in other countries, of the goods and services to which the mark applies; ( c) the degree of the inherent or acquired distinction of the mark; (d) the quality, image or reputation acquired by the mark; (e) the extent to which the mark has been registered in the world

(f) the exclusivity of registration attained by the mark in the world; (g) the extent to which the mark has been used in the world; (h) the exclusivity of use attained by the mark in the world; (i) The commercial value attributed to the mark in the world; (j) The record of successful protection of the rights in the mark

(k)the outcome of litigations dealing with the issue of whether the mark is a well-known mark (l) the presence or absence of identical or similar marks validly registered for or used on identical or similar goods and services and owned by persons other than the person claiming that his mark is a well-known mark.

Protection of Trade Names • Paris Convention mandates that member countries shall protect the trade names of nationals of other members “without the obligation of filing or registration” • Section 18 of the Corporation Code prevents the use as corporate names of designations “protected by law”

1. What is the national treatment principle in IP law? Each WTO member shall accord to nationals of other Members treatment no less favorable than that which it accords to its own nationals with regard to the protection of intellectual property 2. What is the most-favored national treatment in IP law? With regard to the protection of intellectual property, any advantage, favor, privilege or immunity granted by Members to the nationals of any other country shall be accorded immediately and unconditionally to the nationals of all other Members.

It doesn’t pay to copy another’s mark particularly if it’s well known Section 123. Registrability. A mark cannot be registered if it:* (e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services:

Provided, That in determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark;

Why do I have to worry about it? SECTION 123.Registrability. A mark cannot be registered if it:* (f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: Provided,

That use of the mark in relation to those goods or services would indicate a connection between those goods or services, and the owner of the registered mark: Provided further, That the interests of the owner of the registered mark are likely to be damaged by such use;

Call it by any other name and it won’t mean the same Section 121.3. "Trade name" means the name or designation identifying or distinguishing an enterprise; (Sec. 38, R.A. No. 166a)

A mark can be a trade name and vice versa ROLEX, KODAK, INTEL, MICROSOFT, AMAZON, BARBIZON

Protection of Trade Names • Paris Convention mandates that member countries shall protect the trade names of nationals of other members “without the obligation of filing or registration” Section 18 of the Corporation Code prevents the use as corporate names of designations “protected by law”

When is it immoral and when deceptive? Section 165.Trade Names or Business Names. 165.1. A name or designation may not be used as a trade name if by its nature or the use to which such name or designation may be put, it is contrary to public order or morals and if, in particular, it is liable to deceive trade circles or the public as to the nature of the enterprise identified by that name.

No registration is required for protection 165.2.(a) Notwithstanding any laws or regulations providing for any obligation to register trade names, such names shall be protected, even prior to or without registration, against any unlawful act committed by third parties. (b) In particular, any subsequent use of the trade name by a third party, whether as a trade name or a mark or collective mark, or any such use of a similar trade name or mark, likely to mislead the public, shall be deemed unlawful.

Enterprise must be be transferred with the trade name

165.3.The remedies provided for in Sections 153 to 156 and Sections 166 and 167 shall apply mutatis mutandis. 165.4.Any change in the ownership of a trade name shall be made with the transfer of the enterprise or part thereof identified by that name. The provisions of Subsections 149.2 to 149.4 shall apply mutatis mutandis.

Domain name as a trademark

A name may be a mark

A BENCH is what you wear to sit on one

Is it alright to use your name as a mark when you’re dead? Section 123.1. A mark cannot be registered if it* *(e) Consists of the name, portrait or signature identifying a particular living individual except by his written consent, or the name, signature or portrait of a deceased President of the Philippines during the lifetime of his widow, if any, except by the written consent of the widow;

What you hear is what you paid for

If TEXT ALOUD doesn’t tell you what it is, it time to quit this course!!

If a Dragon talks, will you understand what it says?

Don’t use it if it tells you what the product is Section 123. A mark cannot be registered if it: (j) consists exclusively of signs or of indications that may serve in trade to designate the kind, quality, quantity intended purpose, value, geographical origin, time or production of the goods or the rendering of the services or other characteristics of the goods or services.

… unless you are ready to use it for the at least five years before you can claim it as your own 123.2 As regards signs or devices mentioned in paragraphs (j), (k), and (l), nothing shall prevent the registration of any such sign or device which has become distinctive in relation to the goods for which registration is requested as a result of the use that have been made of it in commerce in the Philippines.

and even then, it’s just prima facie after five years!!! The Office may accept as prima facie evidence that the mark has become distinctive, as used in connection with the applicant's goods or services in commerce, proof of substantially exclusive and continuous use thereof by the applicant in commerce in the Philippines for five (5) years before the date on which the claim of distinctiveness is made.

If it has a secondary meaning, it must have a primary Doctrine of secondary meaning or acquired distinctiveness •limited to marks under paragraphs (j),(k) and (l), and excludes absolutely unregistrable trademarks • Phil. Nut Industry Inc. vs. Standard Brands Inc., GR L-23035, July 31, 1975; PLANTERS • Ang vs. Teodoro, GR No. L-48226, December 14, 194; ANG TIBAY

It’s the consumer’s mind that counts Tests of Strength • Strength refers to the distinctiveness of the mark •Fanciful-suggestive-descriptive continuum is often used to determine strength or weakness of marks •It is a question of consumer recognition •It is not determined by the value of the goods on which it is used

…and the more users there are, the less distinctive it is •Strength is also determined by number of third-party uses • e.g., In a crowded field, MRS. OF THE WORLD is not likely to be confused with MISS WORLD, Miss World UK vs. Mrs. American Pageant, Inc. 856 F. 2d 1445

Do you order it single or double? •A mark may be used singly or in combination with other marks e.g., company name is used as house mark in addition to another mark on labels: SONY VAIO, KELLOGG POP-TARTS, Kellogg vs. General Foods Corp., 166 USPQ 27 • Multiple marks may be used together by multiple users e.g., lawn mower manufactured by Yardman and retailed by Sears Roebuck can be

properly identified as “Product of Yardman for Sears Roebuck, Yardman, Inc. vs. Getz Exterminators, Inc. 157 USPQ 100

If it’s difficult to remember, it’s better than one that isn’t Types of Marks •Arbitrarily arranged letters given wide protection because they are difficult to remember •An alphanumeric telephone number may be used a trademark, but if it includes a generic term, composite mark can be descriptive and may be protected only upon proof of secondary meaning •But numbers used to indicate size, capacity, model or style are not used as trademarks

•Abbreviations and nicknames may function as marks, e.g., COKE for Coca-Cola, BUD for Budweiser •Slogans can serve as marks, e.g.. Where There’s Life… There’s Bud, but not Soil It-Wash itNever-Needs Pressing for apparel

If it is ornamental, keep it as a house decor Ornamental symbols and designs may serve as source designations, but not if exclusively ornamental, e.g., red, white and blue panels on basketball, In re Soccer Sport Supply Co., 507 F 2d 1400; colored bands around top of men’s socks is not distinctive, In re Schenectady Varnish Co., 280 F2d 169; but a mark consisting of three parallel colored lines of each side of ADIDAS shoes was registered on proof of secondary meaning, In re Dassler, 134 USPQ 265

If is useful for practical purposes, it doesn’t function as a mark Product and Container Shapes may be protected under unfair competition law if following elements are present: •Non-functionality •Proof of secondary meaning •Likelihood of confusion e.g., shape of classic automobile, Ferrari SpA vs. McBurnie, 11 USPQ2d 1843; overall design of sports shoes, L. A. Gear vs. Thom McAn Shoe, 12 USPQ2d 1001

… but if is neither functional nor ornamental, it might be worth a try Levi’s pocket tab is a valid trademark, not primarily functional, and not merely ornamental, Levi Strauss & Co. vs. Blue Bell, 200 USPQ 434

You can’t appropriate what others need to compete If one manufacturer should make an advance in effectiveness of operation or simplicity of form, or in utility of color; and if that advance did not entitle him to a monopoly by means of a machine or process or a product or a design patent; and if by means of unfair trade suits he could shut out other manufacturers who plainly intended to share in the benefits of unpatented utilities …

he would be given gratuitously a monopoly more effective than that of the unobtainable patent in a ratio of eternity to seventeen years – Pope automatic Merchandising Co. vs. McCrumHowell Co., 191 F. 979, 223 US 730

If the Supreme Court said so, you better believe it! Functional features cannot be appropriated as trademarks • Asia Brewery Inc. vs. San Miguel Corp., July 5, 1993 Territorial character of trademarks •Philip Morris Inc. et. al. vs. Fortune Tobacco Corp., July 16, 1993 • But see Section 123(e) * * * In determining whether a mark is well known, account shall

be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark;