BOOKS A TO Z
TRADEMARK NEWS
Matthew D. Marquardt, Editor
Articles:
No Acquired Distinctiveness in Swiss Army Knife Color
Mattel Sues Record Company over Danish Rock Band's Song
Intent-to-Use Rights Strengthed
Lawn Furniture not Protectable Without Showing of Specific Source-Indicating Features
Canadian Rights of US Mark Owners Clarified
Race Track Portrait on T-Shirts Not Protectable
First Decisions Support New Alternative for Trademark Protection
No Acquired Distinctiveness in Swiss Army Knife Color
The United States Court of Appeals for the Second Circuit, which oversees cases arising
in the New York area, ruled September 4 that the color red, particularly as used on the handle
of "Swiss Army" knives, has acquired no distinctiveness in the minds of consumers. In so doing,
the court upheld a district court finding under section 43(a) of the Lanham Act that because
several competitors have made "Swiss Army" knives and other "multifunction pocket knives"
with red handles for nearly as long as plaintiff Forschner Group, Inc., no shade of red is entitled
to protection when used on a knife handle. The appeals court also overturned a district court
finding that the term "Swiss Army knife" has any geographic or qualitatively descriptive qualities,
finding that it lacks distinctiveness also.
Although the court found as an alternative that the handles were theoretically
protectable under New York state unfair competition law, it found no likelihood of confusion
and affirmed the district court's refusal to modify a previously-entered order denying the plaintiff
an injunction.
Source: BNA's Patent, Trademark & Copyright Journal, 9/18/97
Mattel Sues Record Company over Danish Rock Band's Song
Toy manufacturer Mattel Inc. sued record distributor MCA on September 12 in
U.S. District Court in Los Angeles, claiming trademark infringement by Danish rock group
"Aqua"'s song "Barbie Girl." MCA claims the song was distributed with a disclaimer stating that
the song is intended as social commentary and was made without the toymaker's approval.
Mattel sought immediate withdrawal of all copies of CD's and videos containing the song, a
stoppage of Internet promotional activities, and unspecified monetary damages. The rock band
was not named because the toymaker allegedly believed the damage to have been caused by
MCA.
The precise legal theory of the complaint was not immediately clear.
Source: National Law Journal, 10/6/97
Intent-to-Use Rights Strengthed
Rights of trademark applicants filing intent-to-use (ITU) applications to reserve future rights in
marks they have not yet begun to use have recently been strengthened by both the courts and the
Trademark Office's Trial and Appeals Board. It has long been established that once use of the mark
is been "perfected" through use, many of the rights associated with the mark relate back to the fiing
date of the ITU application. Substantial uncertainty has lingered, however, about the status of ITU
rights during prosecution of the application. For example, once a mark covered by an ITU applicaiton
has actually been put to use and the mark has been registered, the priority date of the mark becomes
the filing date of the application, and not the date of first use. But it has not been clear whether an
ITU applicant could use its filing date to defend its application in an opposition proceeding by users
who adopted marks after the filing date of the applicant's application, or whether the applicant could
use its ITU application offensively in an opposition proceeding of its own. Each of these questions now
appears to have been answered in the affirmative by the Trademark Trial and Appeals Board. In
addition, the defensive use of an ITU application to stop an injunction attempt by a plaintiff who took
up use of the mark after the the ITU applicant's filing date has recently been approved by the Second
Circuit court of appeals.
It has also been suggested by some observers that the Second Circuit may be ready to approve
the offensive use of ITU applications to enjoin use of a mark adopted subsequent to the filing of an ITU
application, contingent upon actual use and registration.
Source: National Law Journal, 5/12/97.
Lawn Furniture not Protectable Without Showing of Specific Source-Indicating Features
The Federal Second Circuit Court of Appeals, based in New York City, on May 16 vacated a
preliminary injunction preventing a lawn furniture maker from selling or advertising furniture it copied
from another lawn furniture maker on grounds that the complaint upon which the injunction request
was based failed to "focus on the specific features... the company claims as trade dress" and which serve
to indicate the source of the product. The court, which recently decided that product packaging should
be reviewed, in trade dress cases, as a whole to determine the intent of the product packager in
distinguishing the source of its products, acknowledged that it is moving toward separate tests for
product packaging and product configuration cases. The difference is based on the distinction that
"packaging is usually indicative of a product's source, while the design or configuration is not usually
so." Other circuits, including notably the third and eighth, have differed with the second in their
opinions in this area. Some observers have seen these questions, which arise from a disagreement over
interpretation of the Supreme Court decision in Two Pesos v. Taco Cabana, Inc., 505 US 763 (1992),
as ripe for Supreme Court review.
Sources: BNA's Patent, Trademark & Copyright Journal, 5/22/97; National Law Journal, 5/12/97; Landscape Farsm v. Columbia Cascade, No. 96-9465.
Canadian Rights of US Mark Owners Clarified
The Federal Court of Canada recently found, in Enterprise Rent-A-Car v. Singer, that it is not
necessary for a mark to be famous in order to merit protection there, even where the mark is neither
registered nor used by its owner in Canada. The court stated that where a mark enjoys goodwill among
Canadians, a misrepresentation has been made in Canada, and damage is likely to result from the
misrepresentation, no additional "fame" need be asserted in order to obtain relief.
Source: National Law Journal, 5/12/97.
Race Track Portrait on T-Shirts Not Protectable
The United States District Court for Southern New York ruled April 9 that pictures of the
Saratoga race track placed on t-shirts and other souvenirs do not amount to and are not protectable
as trade dress. In doing so, the court complied with the second circuit distinction between product
configuration and packaging (discussed above), finding that for t-shirt designs the test of inherent
distinctiveness is whether the alleged trade dress is likely to serve primarily as an indicator of source.
The court further found that in the case of paintings placed on t-shirts the First Amendment interest
in artistic expression might outweigh and defeat the confusion-defeating purposes of the Lanham federal
trademark act. Plaintiffs in the case, owners of the Saratoga track, sued a publishing company for
selling t-shirts bearing original paintings of the race track. Reconsideration at the request of the
plaintiffs was denied; however, the court certified the case for interlocutory appeal.
Sources: BNA's Patent, Trademark & Copyright Journal, 5/22/97; New York Racing Assoc. v. Perlmutter Publishing.
First Decisions Support New Alternative for Trademark Protection
The first decisions interpreting the Federal Trademark Dilution Act of 1995 (15 USC § 1125(c)),
which took effect January 16, 1996, are being handed down. The Dilution Act provided a new Federal
statutory cause of action for the dilution of famous trademarks. Previously such statutes had been in
effect in several states; they were -- and continue to be -- useful in specialized circumstances; but the new
Federal law substantially strengthed mark owners' rights against both traditional forms of dilution:
bluring (in which a mark is used in such manner as to raise the possibility that the mark will lose its
ability to serve as a unique indentifier of the owner's goods or services) and tarnishment (use of a mark
in connection with shoddy or unwholesome goods).
Some of the decisions are troubling. Although the Act specifically provides that protection is
to be available regardless of the presence or absence of competition between the owner of the mark and
others, or of the liklihood of confusion, mistake or deception, several of the decisions look for proof of
factors closely associated with traditional "likelihood of confusion" tests. This has especially been true
in blurring cases. For example, Ringling Brothers lost in its attempts to use a blurring theory in
enjoining the use by a bar of the phrase "The Greatest Bar on Earth," and to stop the State of Utah
from using "The Greatest Snow on Earth" to advetise its ski areas. Similarly, American Express was
unable to stop the use of "Don't Leave Home Without My Pocket Address Book." Success in
tarnishment cases has been better. For example, Anheiser Busch was successful in stopping the sale of
"Buttwiser" t-shirts.
Source: National Law Journal, 5/12/97.
The Editor
Return to Tips and Information Page