Trademarks, Trade Dress and Ownership

"[W]hat appear to be private disputes among hucksters almost invariably touch the public welfare. We shall therefore be concerned to ask, when courts protect trade symbols, whether their decisions further public as well as private goals. -- Ralph Brown Jr.

"The world has changed quite a bit since Ralph brown wrote his 1948 article. Trademark law and trademark economics have both made significant strides in the last fifty years, but unfortunately they don't seem to be marching in lockstep. Rather, the law has broken stride with economic thinking in dangerous ways. I don't think Brown would approve of the ways trademark law has changed in the last fifty years, but perhaps he would recognize them. He wrote:

"In an acquisitive society, the drive for monopoly advantage is a very powerful pressure. Unchecked, it would no doubt patent the wheel, copyright the alphabet, and register the sun and moon as trade-marks."

We seem to be moving down that road. Unless we are careful, we may end up in a world in which every thing, every idea, and every word is owned. And we will all be the poorer for it."

-- Mark. A. Lemley (William H. Neukom Professor of Law, Stanford Law School, Stanford University), The Modern Lanham Act and the Death of Common Sense, Yale Law Journal, Vol. 108, p. 1687, 1999

One of the most perverse, ill-based and -- in our opinion -- perhaps even unconstitutional laws in the field of law is the "trade dress" standard as found in the U.S. Federal Trademark Act of 1946, also known as the Lanham Act.

The Lanham Act by its very nature extends monopolistic product protection beyond the limitations otherwise provided by patent laws and the patent provision of the United States Constitution.

Section 43(a) of the Lanham Act provides as follows via text posted to the Wikipedia:

"Under section 43(a) of the Lanham Act, a product's trade dress can be protected without formal registration with the PTO.^[8] In relevant part, section 43(a) states the following:

"Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which

(A) is likely to cause confusion, or to cause mistake, or to deceive [...] as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or

(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities,

shall be liable in a civil action by any person who believes that he or she is likely to be damaged by such an act."^[9]

This statute allows the owner of a particular trade dress ("container for goods") to sue an infringer (a person or entity who illegally copies that trade dress) for violating section 43(a) without registering that trade dress with any formal agency or system (unlike the registration and application requirements for enforcing other forms of intellectual property, such as patents). It is commonly seen as providing “federal common law” protection for trade dress (and trademarks).^[10]"

Such an over-broad blanket provision appears to us to be unconstitutional on its face because it wrongly expands the limited protection given to products by the patent clause of the U.S. Constitution, without which provision there is no "original" basis (that statement is directed to the "originalists" on the U.S. Supreme Court) to grant this kind of special protection to commercial enterprises and their products, i.e. beyond what the Constitution provides.

Indeed, the basics of the Lanham Act provision can be traced back to ancient medieval guilds that were established to gain, maintain and expand the monopoly power of merchants with respect to their products.

Little has changed since then as "merchant" monopolies have gotten worse than ever, which can be seen via the resulting and egregious wealth and income inequality in the USA.

The Lanham Act is generally not used to protect companies or consumers from actually "confusing" brands and products, but rather to further monopolies and conveniently get rid of possible competition.

The Lanham Act wrongly gives protection -- without the requirement of any kind of lawful, controlled and checked registration whatsoever (!) -- to elements of product and packaging design and appearance that otherwise would not be entitled to patent protection since features such as size, color, combinations of color, shape, packaging in general, and even the selling "atmosphere" or "look and feel" of a product would be barred from such protection because they relate to natural physical viz. geometric features not invented or discovered by the seller. Moreover, natural features are foreseen by prior art and are obvious to boot.

The grant of protection to the simple use of natural features of our world thus works as a severely limiting roadblock to innovation and competition.

Just imagine a painter claiming a particular "color" as his "trade dress".
Just imagine hundreds of painters claiming their particular "color" as their proprietary "trade dress".
Just imagine thousand of painters claiming their particular "color" as their proprietary "trade dress".
It would not be long before no new painter could paint anymore because all of the colors had been taken.
It is a terrible scenario, but corresponds well to the modern tech world and to erroneous judicial decisionmaking in the past.

The ill-conceived provisions of the Lanham Act and the unwise judicial interpretations of that act are leading us into a "trademark Armageddon".

Representing the extreme of this "trademark" example we find a greedy monopolist such as the commercial Apple firm arguing in court via "trade dress" rationales that it ALONE should be the ONLY company permitted to sell black-colored rectangular tablets viz. mobile phones with rounded corners and having a frame (bezel) holding the framed electronic display.

You think we are joking? Not at all. 
Take a look at all the Apple claims in the Samsung trial via The Verge.

Apple calls its phone or tablet designs (or non-designs) "minimalist" art because they are essentially purely geometric in form and have few unique identifying man-made features. Rather there is more or less an ABSENCE of specific designs of any kind. One "steals" primarily God-made geometry.

The upshot of the ridiculousness of the Lanham Act provisions is that a detailed and uniquely well-identifiable design by its uniqueness marks off very little IP trademark viz. "trade dress" territory, whereby an alleged "minimalist" design, due to the very fact that it is hopelessly generic, is amply found in prior art and is usually patently obvious, tries to mark off great swaths of IP territory as proprietary to one company.

This shows that the Lanham Act "trade dress" provision is extremely bad legislation, accompanied, as it has been, by really terrible judicial opinions. See the cases in George D. Royster, Halloran & Sage LLP, Protecting Business Assets Under the Lanham Act. Cynthia Clarke Weber, Trade Dress Basics. Robert J. Yarbrough, Protection of Trade Dress.

Mark A. Lemley had it right in his title
in The Modern Lanham Act and the Death of Common Sense.
That is where the law currently finds itself.  Make sure you read that article.