Trademark policy is a tool to facilitate consumers to distinctly identify the source of goods or products that they like. Its goal is to ensure that a consumer who wants to specifically use product x is not confused or deceived into using product y, believing it to be from the same source and hence of the same value- be it aesthetic or functional, as product x. To fulfill this goal, law makers have deemed it fit to confer exclusionary rights in the use of such source identifying attributes– often affixed to the products- to those who provide these products. What are these source identifying attributes? The legislators seem to understand these attributes to include verbal and non-verbal identifiers.-n“any word, name, symbol, or device” or any combination of these tools of source identification that a provider may use in conjunction with their product to facilitate recognition- as being excludable.
The underlying purpose of this exclusionary right is to protect the interest of consumer in being able to firmly identify the source, and to protect the interest of the provider in being able to use such distinctive identifiers enabling consumers to identify the source. It logically flows from this that such exclusionary rights are only to be extended to those attributes that are primarily and specifically used for identifying the source of the product. However, by broadly interpreting the meaning of “symbol” and “device”,[1] courts have rendered even attributes that generally are not considered by consumers to identify source, as being source identifiers or performing a source identification function.[2] Courts have reasoned this on the basis of the capability of such attributes to have a source identification function,[3] without investigating into whether – when divorced from the word mark and/or the distinctive logo (that primarily have source-identifying functions)- these attributes are even considered by consumers while identifying source, or not.
The upshot? Exclusionary rights have been extended to even (i) attributes which- even when divorced from the word mark or the logo- almost never actually have a source identification function but are merely attractive design features with their own non-source identifying significance (and its own legal tool of enablement – copyright law or design law)[4]; (ii) attributes which sometimes form part of the product- thus allowing an exclusionary right over the product itself- a product which may have use significance, although not functional utility in its strict sense;[5] (iii) attributes which flow from the experience of the product – its sensory characteristics- aesthetic, auditory, olfactory.[6] These although, almost always are a subject of originality and creativity and sometimes even novelty, are rarely primarily performing a source identifying function, especially when used in conjunction with a word mark or a logo. Most of the time, the originality of their sensory expression is excludable through other forms of intellectual property – copyright law, design patent law etc.- however given trademark protection, at least theoretically is perpetual (although we have the genericide doctrine), providers would often love to double up these exclusionary rights by portraying these attributes to also be source identifying.
A further radical upshot, with potential to be dismissed as being a conspiracy theory- Almost all of visual and auditory copyrightable subject matter could potentially be overlapping with trademark law- thus providing double and perpetual exclusion of works which are socially valuable to be accessed and used. The way trade dress protection has expanded- it is not inconceivable that Taylor Swift seeks trade dress protection over her songs arguing that – Hey! Someone listening to my song will immediately identify that this song comes from me, or Banksy seeks trade dress protection arguing – Hey! Anyone who sees that art on the train would obviously know that it’s me who has done that. We all know this has nothing to do with the goals of trademark policy and why it exists.
Such analysis is not limited to product configuration but extends to product packaging too- where even when divorced from the wordmark and the logo, the packaging would mostly be attractive – and that would be its primary function as against source identification -which automatically flows from that attraction because we would want to know who produced this attractive packaging. But such secondary potential of source identification is possible with all subject matter of copyright law as well. I might like a song by Radiohead because of its sensory attributes, but I would then associate Thom Yorke’s voice with him as a byproduct of the attraction. This source identification function although does not seem to be the concern of Trademark law because it directly flows from the song (product configuration) or its amazing sound recording (product packaging), as against a specific attribute peculiarly intentioned to help a consumer identify source. That specific attribute is the concern of trademark law. Put another way, how much ever Thom Yorke wants to trademark his sound, because as soon as we hear it- we know it distinctively is Thom Yorke’s attractive voice, that is not the kind of source identification trademark law protects – by providing an exclusionary right over the product itself.
If at all trademark protection is to be extended to product packaging or product configuration as source identifiers, the relevant enquiry could be:
Divorced from verbal and logo- identifiers which primarily serve as source identifiers- does the consumer, almost inevitably, associate the sensory attribute to be source identifying, as against anything else?
Maybe in the absence of the logo and the word mark on the product packaging, I would have to rely on distinct design features or packaging color (product configuration or product packaging), but when the product already has specific source identifiers in the form of a word mark and/or a logo, associating any source identification function on the trade dress/ design- be it of the product or the packaging- is a leap, which, on an objective basis, average consumers would not rely on.
This is where secondary meaning comes at play. If there is a product which does not have a specifically dedicated source identifier but rather relies upon its product packaging or product configuration to perform an identification function, and the consumers realize this and rely upon the said attribute over time (hence secondary meaning), there could be enough of a claim to extend source identification to trade dress. But this is as rare as it gets, and this is why, as Glynn Lunney recognizes- the legislators did not envision this, specifically including “packaging” or “configuration of goods” in the definition of a trademark only in the secondary/supplementary register and not for purposes of the principal register.[7]
Thus, J. Breyer’s broad reading of “symbol and device” in Qualitex, to conclude – any and everything that could possibly, inspite of the existence/ or in the absence of a dedicated source identifier, be a source identifier – is overzealous interpretation- completely ignoring the purpose and the interest sought to be achieved by the tool of trademark policy. It, as Lemley and Dogan argue, is a tenuous presumption of consumer behavior.[8] Put concretely, in my opinion, it is not objectively reasonable to assume that inspite of the boldly written distinctive name- Reese, in its distinctive style, font and logo-like characteristics, the consumer would continue to rely on its orange-colored wrapper to identify its source. And even if the consumer unbelievably loves associating the color- orange with Reese- thus showing certain amount of secondary meaning, still- so long as primarily specific source identifiers in the form of the logo or the word mark exist, there is no reason to allow excluding some other chocolate manufacturer- with a different logo and word mark to use the color orange on its packaging.
There is thus a need, and a strong one, to get rid of the propertarian impulse that provokes an exclusionary right on packaging or product design or sensory features, in the presence of other and specifically dedicated source identifiers. An exclusionary right on such features in some cases could be the domain of copyright law and in some of patent law, but in none is it a concern of trademark law and policy. When these specifically dedicated source identifiers are not present, it is only then, as a policy matter, that it could be explored whether upon finding secondary meaning- product packaging or product configuration could be rendered excludable for the purposes of source identification, or not.
[1] In Two Pesos, the Supreme Court interpreted trademark protection to extend to the total image of the business, general appearance of the product/its exterior, the décor, the menu and collated it into a single test – distinctive total image and overall appearance. The Court noted that in §43(a) or in the definition of Trademark under §45, legislators have not differentiated between a trade dress and a trademark – and hence an inherent distinctiveness approach ought to be followed, as against a secondary meaning approach. The Court said that legislators have given no basis to differentiate between a trademark and a trade dress or to not include the latter as a subset of the former. It thus differed from the logic of the 2nd Circuit in Stormy Clime Ltd. v. Pro Group. This was applied to extend protection to the festive eating atmosphere and the interior and exterior design of a Mexican restaurant. As Glynn Lunney argues in The Trade Dress Emperor’s New Clothes: Why Trade Dress Does Not Belong on the Principal Register, 51 Hastings L.J. 1131 (2000) [Emperor’s New Clothes], the Court completely ignored the distinction between the definitions of trademark for the purposes of the principal register and the supplementary register. It was a conscious omission- conscious decision of the legislators according to Prof. Lunney, to not include trade dress for purposes of excludability through the principal register. Such excludability was wrongly first initiated by A.C. Daphne Roberts Leeds in Exparte Haig & Haig Ltd., 118 U.S.P.Q. (BNA) 229 (Comm’r Pat. 1958), and has since, according to him, begun to spiral out of control.
Even in Qualitex v. Jacobson, J. Breyer extends the meaning of symbol and device to include anything capable of carrying meaning. He logically supports this by referring to the registration and validity of shape marks, scent marks, sound marks etc. He accordingly posits if all of that is in scope, why would not the scope extend to color? Justice Breyer thus seems to, without any reasoning, accept the premise that shape marks, scent marks and sound marks are protectable. He assumes the authority of these registrations, without questioning whether they are within the scope of the interest sought to be furthered by the tool of trademark law or not- and on the basis of that presumption extends protection to colors.
[2] Graeme B. Dinwoodie, The Death of Ontology: A Teleological Approach to Trademark law, 84 Iowa L.Rev. 611, 621-622 (1999) [“Courts have protected as trade dress the design features of extensive range of products including kitchen appliances, sporting equipment, candies, bathroom fittings, sports cars, giant gumball machines, furniture, hardware items, fashion accessories, lamps and even golf holes.”] See also, Justice Breyer in Qualitex, where he states- “The courts and the Patent and Trademark Office have authorized for use as a mark a particular shape (of a Coca–Cola bottle), a particular sound (of NBC’s three chimes), and even particular scent (of plumeria blossoms on sewing thread). See, e.g., Registration No. 696,147 (Apr. 12, 1960); Registration Nos. 523,616 (Apr. 4, 1950) and 916,522 (July 13, 1971); In re Clarke, 17 U.S.P.Q.2d 1238, 1240 (TTAB 1990). If a shape, a sound, and a fragrance can act as symbols why, one might ask, can a color not do the same?”
[3] In Two Pesos, the Court prominently focused on capability of having a source identification function as against whether the attribute is generally considered to be performing a source identification function or not. The Court held any attribute that is an “inherently distinctive dress that is capable of identifying a particular source of the product” to be eligible to be excludable. Glynn Lunney argues against this in Emperor’s New Clothes, where he asserts- “First, the mere possibility that trade dress can serve a trademark function does not mean that a product feature or design is serving as a trademark in any given case. Yet, the recognition of trade dress as principal register subject matter encourages the assumption that some aspect of a product or its packaging claimed as trade dress is necessarily serving a trademark function. This assumption is unwarranted, particularly when a party claims a product’s features or configuration, rather than its packaging, as trade dress As the Restatement (Third) of Unfair Competition has recognized, consumers seldom perceive and rely on product configuration or product features as a source of information regarding the product, rather than as an aspect of the product itself.”
[4] In Christian Louboutin, the use of an aesthetic product or its aesthetic feature was protected. In Wallace, the use of the silverware, in case it was a part of a competitive market, would have been held to be excludable. In Qualitex, the particular product and its color feature was protected. In Best Cellar, the interior design of a wine cellar was held to be protectable, inspite of ambience being one of the core elements of the market of the product. Lemley and Buccafusco argue this to be an awkward overlap with Copyright law which is completely undesirable and comes with much more costs- and should be scrapped. See, Mark Lemley and Chris Buccafusco, Functionality Screens, 103(7) Virginia Law Review 1293, 1373 (2017).
[5] The decision in Wallace Int’l Silversmiths, Inc. v. Godinger Silver Art Co. clearly shows this – where the Court falls in what Richard Stallman calls intellectual property law’s seductive mirage- conflating the propertarian impulse associated with copyright law- with the extremely distinct purpose of trademark law. In Wallace, the Court rejects, what I believe to be the sound rationale of the 2nd Circuit in Pagliero to hold that “Under Pagliero, the commercial success of an aesthetic feature automatically destroys all of the originator’s trademark interest in it, notwithstanding the feature’s secondary meaning and the lack of any evidence that competitors cannot develop non-infringing, attractive patterns. By allowing the copying of an exact design without any evidence of market foreclosure, the Pagliero test discourages both originators and later competitors from developing pleasing designs.” This extremely significant portion of the Wallace decision shows how court is confused about the difference between the trademark and the copyright doctrine and its goals- and extrapolates copyright’s logic on a trademark issue. The court limits the doctrine of aesthetic functionality as a defense to only when market competition is being foreclosed- another logic that flows straight from the logic of the merger doctrine and the scenes a faire doctrine in copyright law- without understanding that most of these aesthetic feature are actually valuable for their attractiveness, and what the actual subject matter of trademark protection is, is the name or logo that accompanies it for the purpose of associating this attractiveness with the one who provides the attractive work. The court also relies on Illustration 6 of the Restatement which says- “A manufactures china. Among the products marketed by A is a set of china bearing a particular “overall” pattern covering the entire upper surface of each dish. Evidence indicates that aesthetic factors play an important role in the purchase of china, that A’s design is attractive to a significant number of consumers, and that the number of alternative patterns is virtually unlimited. In the absence of evidence indicating that similarly attractive “overall” patterns are unavailable to competing manufacturers, A’s pattern design is not functional under the rule stated in this Section.”- In my opinion- by adopting this rationale, the Restatement and the Court in Wallace has conflated the subject of copyright protection and its rationale supported by Clause 8 or the IP Clause of the Constitution, with the subject and object of trademark protection- which is completely distinct and is more of a source identification function with roots in the commerce clause. See also, Mark Lemley and Chris Buccafusco, Functionality Screens, 103(7) Virginia Law Review 1293, 1346-1347, 1373 (2017).
[6] Justice Breyer in Qualitex, where he states- “The courts and the Patent and Trademark Office have authorized for use as a mark a particular shape (of a Coca–Cola bottle), a particular sound (of NBC’s three chimes), and even particular scent (of plumeria blossoms on sewing thread). See, e.g., Registration No. 696,147 (Apr. 12, 1960); Registration Nos. 523,616 (Apr. 4, 1950) and 916,522 (July 13, 1971); In re Clarke, 17 U.S.P.Q.2d 1238, 1240 (TTAB 1990). If a shape, a sound, and a fragrance can act as symbols why, one might ask, can a color not do the same?”
Even J. Scalia in Wal Mart Stores, to avoid disagreeing with Two Pesos, teleologically finds (awkwardly- as noted later in Best Cellars Inc. v. Wine Made Simple) that “Two Pesos is inapposite to our holding here because the trade dress at issue, the decor of a restaurant, seems to us not to constitute product design. It was either product packaging—which, as we have discussed, normally is taken by the consumer to indicate origin—or else some tertium quid that is akin to product packaging and has no bearing on the present case.” It is unfathomable as to how the interior of the restaurant does not function as a product design – because in a restaurant, the product is not just the food and drinks but also the ambience- which significantly drives consumer choice and motive of visit.
[7] Glynn Lunney, Emperor’s New Clothes, supra notes 1 and 2.
[8] Stacey L. Dogan & Mark A. Lemley, Trademarks and Consumer Search Costs on the Internet, 41 HOUS. L. REV. 777, 777 (2004) (“[C]ourts have stretched trademark doctrine . . . based . . . not on the normative goals of trademark law, but on unexplored instincts and tenuous presumptions about consumer expectations and practices.”).
IP Musings 