Subject Matter Exclusion in Trademark Law

Overview

• Focus on what cannot be protected as a trademark.
• Tied to the concept of distinctiveness.
• Functional shapes and designs cannot be protected.

Key Concepts

Distinctiveness

• A mark needs to be distinctive to be protected.
• Trade dress and shapes can be protected if they have acquired secondary meaning.

Functionality

• Functional designs cannot be trademarked.
• Functionality: If a mark is functional, it cannot be protected.
  • Reference to the case Quality Textiles vs. Jacobson and the Supreme Court's definition.
• Enshrined in the Lanham Act, Section 2.

Important Case Studies

Morton Norwich

• Case Overview: Focused on the design of a spray bottle after patent expiration.
• Court's Considerations:
  • Is the container functional?
  • Does it have utility?
  • Is the design essential to the product's function?
• Test Derived: A design is functional if it's the best or one of the few superior designs available.

Vornado

• Emphasizes the problem of cumulating patent and trademark protection.

Aesthetic Functionality

• Aesthetic features can be functional if they are essential to the product's success.
• Key Case: Pagliero vs. Wallace China.
  • Determines if a design feature is functional or merely ornamental.
  • Ornaments should not limit competition by restricting design alternatives.

Supreme Court Cases

• Reference to several cases, with a focus on Traffix.
  • Emphasizes that the existence of a prior patent is against trademark protection.

Recent Developments

Louboutin Case

• Focused on the protection of red soles in shoes.
• The red sole was distinctive only as a contrast trademark.
• Key Point: Color cannot be protected in fashion to prevent anti-competitiveness.

Summary

• Objective: To protect competition by preventing functional signs from being trademarked.
  • Utilitarian functionality closely linked to patent protection.
  • Aesthetic functionality is more complex and case-dependent.

Next Steps

• The next videos will focus on the registration of trademarks.