Can I get a trademark on the shape of my product?
Well, maybe. Two common problems that such trademarks run into are (1) the shape of the product is not distinctive enough – looks too much like the products of competitors, and (2) the shape of the product is functional. How is functionality determined? Courts use a multi-part test including things like:
(i) the existence of a utility patent, expired or unexpired, that involves or describes the functionality of an item`s design element;
(ii) the utilitarian properties of the item`s unpatented design elements;
(iii) advertising of the item that touts the utilitarian advantages of the item`s design elements;
(iv) the dearth of, or difficulty in creating, alternative designs for the item`s purpose; and
(v) the effect of the design feature on an item’s quality or cost.
In one recent case, a round rug was sold using an advertisement touting a utilitarian advantage of the round towel. The shape of the towel permits sunbathers “to reposition their bodies in order to get direct tanning exposure from the sun without having to move the towel.” The way the product was marketed did not help things – since the advertisement mentioned a utilitarian advantage of the towel’s shape.
The trademark holder was trying to enforce a trademark that had even become “incontestable” – but ultimately had the trademark invalidated by a federal judge. One potential tactical error here may have been suing Walmart. If the trademark holder had chosen a different target, a settlement might have been obtained. Walmart has the money to fight legal battles. Now, the trademark is effectively dead unless an appeal changes that.
Franek v. Walmart Stores, Inc.
, Civil Action No. 08-CV-0058 (N.D.
March 13, 2009
) (Reg. No. 1,502,261).
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