Partner, Eckert Seamans Cherin & Mellott, LLC.
The doctrine which precludes protection of designs and product features which are "functional" has taken divergent twisting paths in addressing aesthetic features. There is no reason to treat aesthetic and/or ornamental considerations differently than any other type of mark, the Southern District of California has determined in California Board Sports, Inc. v. Vans, Inc., Case 06CV2365-IEG-AJB. In her analysis of the decision, trademark specialist Roberta Jacobs-Meadway addresses such significant questions as: is the doctrine of aesthetic functionality dead?; is there any reason to treat fabric designs as sui generis for purposes of trademark or trade dress protection?; can design features properly be assessed using criteria developed for more traditional trademarks?; and are these adverse consequences for competition if designs and product configurations are not accorded special scrutiny? Similarly, the doctrine which precludes protection of design and product features that are "ornamental" and not "inherent by doctrine" has taken diverse paths in addressing what is required to establish trademark significance, and qualify for protection. The significance is not academic. The remedies for violation of Lanham Act rights can include an award of profits on an unjust enrichment theory, as well as damages and attorneys fees, and product recalls as well as injunctive relief, whether or not product design is the subject of the registered trademark.
The author writes: Although CBSI introduced evidence that checkerboard patterns are widely used in the apparel field, the Court found: 1) it had failed to demonstrate any competitive consequence of protecting the design as used and, 2) Vans had introduced evidence that tended to show the pattern’s appeal to consumers came from the association with Vans.
The Court’s discussion of the issues, concise as it is, suggests that defendants “inspired” by a competitive design can no longer rely on “everybody does it” and “people buy it because it’s an attractive pattern.”
The Company seeking to introduce and market a shoe, or any other article, which shares some design elements from the market leader, needs to bear in mind at least the following:
- what matters is not that some aspect of the design might be found elsewhere in the marketplace if the entire design configuration can not be found to be generally used by companies with real market presence;
- what matters is not that the design has some visual appeal, if a significant portion of the relevant public sees the design and recognizes the source and the inspiration; and,
- issues of functionality, ornamentation and acquired distinctiveness are stubbornly fact-intensive, and recourse to surveys and experts must be anticipated.
The company that seeks to enforce rights in a design such as a checkerboard covering the surface of shoes or a single color covering the surface of a coated abrasive or a “rainbow fade” background on rack cards for stationery items has conversely to watch for of pitfalls that may unseat the effort to stop the sale of products sporting what is essentially the same design.