Section 1114 of the Lanham Act (15 USC) protects registered trademarks and trade dress against infringement by unauthorised users of confusingly similar marks. Non-registered trademarks and trade dress are similarly protected under Section 1125(a) (15 USC). If the claimed trade dress is not registered on the principal register, the party that asserts trade dress protection bears the burden of proving that the design for which protection is sought is not functional.

Dog toy takes on trade dress

The US District Court for the District of Arizona recently addressed the issue of trademark and trade dress protection for products and product packaging in VIP Products, LLC v Jack Daniel’s Properties, Inc. VIP had introduced Bad Spaniels – a rubber, squeaky chew toy in the shape of a square liquor bottle. The toy depicts a spaniel on a black label over the words: “Bad Spaniels, the Old No. 2, on your Tennessee Carpet.” Its design shares many similarities with the Jack Daniel’s Tennessee Sour Mash Whiskey Old No 7 brand bottle, including:

  • the overall shape of the product;
  • the use of white lettering over a black background; and
  • the font styles.

However, VIP has included a disclaimer on the back of the product, which states: “This product is not affiliated with Jack Daniels.”

Jack Daniel’s demanded that VIP stop selling the Bad Spaniels toy, prompting VIP to file its action for declaratory judgment alleging that the asserted Jack Daniel’s trade dress and bottle design contain merely ornamental and decorative features, and are functional, generic and non-distinctive.

Jack Daniel’s responded by filing nine separate counterclaims, including infringement of federally registered trademark and trade dress (15 USC §1114) and infringement of trade dress under federal law (15 USC §1125).

Jack Daniel’s owns US Trademark Registration 4,106,178 for its square bottle design. The description of the mark in its registration reads: “The mark consists of the three-dimensional configuration of the square shaped bottle container for the goods, having an embossed ridge or scalloped design on the neck portion of the bottle and an embossed signature design comprised of the words ‘Jack Daniel’.” Jack Daniel’s also alleged in its response that it owns trade dress consisting of a combination of the following elements:

  • a square bottle with a ribbed neck, a black cap and black neck wrap closure with white printing bearing the OLD NO. 7 mark; and
  • a black front label with white printing and a filigreed border bearing the JACK DANIEL’S trademark depicted in arched lettering at the top of the label, the OLD NO. 7 trademark contained within a filigreed oval design in the middle portion of the label beneath the JACK DANIEL’S trademark and the words ‘Tennessee Sour Mash Whiskey’ in the lower portion of the label with the word ‘Tennessee’ depicted in script.

The court noted that in order to state a trademark or trade dress infringement claim, the plaintiff must establish three elements: distinctiveness, non-functionality and likelihood of confusion.

VIP asserted that the Jack Daniel’s bottle dress and the Jack Daniel-embossed signature on the bottle design lack distinctiveness and are functional. In response, Jack Daniel’s filed a motion for partial summary judgment opposing these claims.

VIP argued that the Jack Daniel’s bottle dress is only a generic identifier of Kentucky bourbon or Tennessee whiskey, not Jack Daniel’s whiskey in particular. The court rejected this argument, noting that the bottle dress “is a combination bottle and label elements… [which] includes the Jack Daniel’s and Old No. 7 word trademarks”. Further, the court noted that in such a case, “the inquiry is not whether individual features of the trade dress are nondistinctive, but whether the whole collection of features taken together are nondistinctive”.

Distinctiveness

Acknowledging that its bottle dress is not inherently distinctive, Jack Daniel’s offered proof that it has acquired distinctiveness through secondary meaning. This occurs when – in the minds of the public – the primary significance of the mark is to identify the source of the product, rather than the product itself. Evidence of secondary meaning can be direct evidence – usually established through consumer surveys, evidence of intentional copying or circumstantial evidence established through extensive sales and advertising of the claimed dress. Jack Daniel’s asserted that the direct copying of the bottle dress by VIP constitutes direct evidence of secondary meaning; the court agreed. In addition, Jack Daniel’s offered circumstantial evidence of secondary meaning by showing that it sold more than 75 million cases of Jack Daniel’s whiskey in the United States between 1997 and 2015, and that it spent hundreds of millions of dollars in advertising for the product.

Non-functionality

On the issue of functionality, the Ninth Circuit test poses four questions:

  • whether the trade dress yields a utilitarian advantage;
  • whether alternative designs are available;
  • whether advertising touts the utilitarian advantages of the design; and
  • whether the particular design results from a comparatively simple or inexpensive method of manufacture.

Jack Daniel’s first asserted that the bottle dress reflects aesthetic design choices that focus on the historical identification of the product unrelated to utility; thus, the dress does not yield a utilitarian advantage. The court also concluded that Jack Daniel’s advertising does not tout any utilitarian advantages to the design.

Likelihood of confusion

Finally, the court focused on whether the “particular integration of elements leaves a multitude of alternatives to [competitors in the] industry that would not prove confusingly similar”. The evidence showed that competitors routinely use alternative designs and packaging for their whiskey products; therefore, numerous alternative designs are available.

Jack Daniel’s also offered unrebutted proof that its bottle dress is not a comparatively simple or inexpensive method of manufacture, given the square shape of the bottle and the embossed Jack Daniel signature on all four sides.

As such, the court concluded that the claimed trade dress is both distinctive and non-functional, and granted the motion for partial summary judgment – enabling Jack Daniel’s to pursue enforcement of its protected trade dress at trial.

While the verdict of the full trial is awaited eagerly, this preliminary finding provides some useful indications of thinking in this area of law – in particular, when non-distinctive trade dress can be judged to have acquired secondary meaning.

Robert J Kenney Partner rjk@bskb.com

Robert J Kenney has over 30 years of experience in patent, trademark and copyright litigation, as well as trademark prosecution, counselling and portfolio management. He helps his clients to protect, profit from and enforce their valuable IP rights, including licensing and IP asset acquisition, creating and protecting trademarks, building brands and making trademarks and brands profitable.

This article first appeared in World Trademark Review. For further information please visit www.worldtrademarkreview.com.