Issue link: https://read.dmtmag.com/i/241540
Trade Dressing W LEGAL LINE e just completed a very difficult federal court case this month. The judge expedited the case so that what ordinarily would have been accomplished in about six months was completed in less than five weeks, and the court then made a ruling. The bad news is that it was very expensive; the good news is that we won. The key issue in this case was what is called "trade dress." Did it exist, what was it, and who actually owned it? This legal principle is probably the greyest of the grey in the law. Basically, it's the "identity" or "personality" of a company or a product. It is not a copyright, trademark or patent. In the U.S. and most patent law countries, five fundamental protections exist for a product or an "identity." 1. A copyright – of an actual written/published work, paper or otherwise. This could include a technical manual, comic book, parts list, novel, movie script, price list, etc. 2. A trademark – of a distinctive logo, combination of words, words in a certain distinctive typeface, or picture of an object or objects (like the IDA logo, "Independent Distributors Association," "USCO," "Costex," "F.P Smith," etc.) 3. A device or utility patent – this could be a gasket, seal, engine part, pump, track chain, rubber track or the like that was designed and manufactured by its patent owner or assignee/licensee. 4. A method patent – basically, how something is made, and not the end product itself; often combined with the device patent claims. IDA UNIVERSAL January-February 2014 5. A design patent – basically, the shape of an object that is so distinctive that it has never been made, used or sold before, such as a container that is different by more than its function So far, so good. Now for some limitations on each category: 1. A copyright only prevents someone from directly copying, word for word – or so closely as to appear "the same" as any published work – without permission of the owner of the copyright. 2. A trademark only prevents direct copying in the business in which the owner has registered it. For example, the word "Cat" could be used and possibly trademarked by a candy maker, but the "Cat" registered trademarks could not be used on the candy. 3. The device patent prevents use of the technology described in the patent – not always an easy task, since patents are written in lawyers' language. The definition of the actual protected invention is often hard to dig out. 4. The method patent cannot patent the end product or result, only the process. This could be a chemical process or a manufacturing process: how to make salt, how to assemble and complete a head gasket, how to EDM machine a master track link. The method is patented, but not the resulting product. 5. The design patent can't describe how something works or what it is made from; that's a device patent. The design patent can only protect the ornamental aspects of the product. Basically, you can't make something that looks like the patented product. Robert W. McIntyre IDA Association Legal Counsel Now that all of this is clear as mud, what is trade dress? Trade dress can take many forms. For example, the way a Cat or Deere dealership looks: the signs, the colors, the typeface used in publications, the colors used in packaging and publications. Why is this not codified in statute law like the five protections described above, and how is trade dress identified? First, it's not codified because even the lawyers and the judges can't come up with a solid definition that covers all situations. Second, "you will know it when you see it" is the definition most used in the cases decided in U.S. courts. Also, when it comes to products, trade dress cannot be associated with function, regardless of how distinctive it might be. For example, for years Cat has very obviously distinguished its tractors from everyone else's by using the hi-drive track system. However, when competitors from outside the U.S. designed around any Cat patents and started offering tractors with the hi-drive, Cat's legal effort to prevent this on a trade-dress basis was unsuccessful, since the "feature" was purely functional. However, the key word in all of the cases is "confusion." Will the typical consumer of the goods Continued on page 56 11