product design is the only form of mark I'm suggesting is appropriate for assertion to protect against knockoffs.
No, brand and product trademarks are clearly the superior and preferred method of doing so--not asserting these trademarks against knockoffs is an instantaneous way of missing your golden opportunity.
If you ignore the Apple logo and iPhone trademarks, and other parties infringe upon them,
then you clearly have a case of consumer confusion. Compare with a design trademark, which can only be asserted in the absence of other distinguishing marks. If a product carries a clear, traditional mark, the case is over.
It is irrelevant that the iPhone also bears traditional registered trademarks such as the little apple symbol or the name iPhone.
Exactly the opposite. The fact that it bears these instantaneous identifying marks and knockoffs
do not is a clear indication of the
utter lack of consumer confusion simply based on a similar product design.
Let's take a simple illustrative example. Eagle holds a design trademark on the traditional yellow pencil with the pink eraser. They also hold a trademark on their corporate logo. My company CAN produce that exact pencil, provided it is clearly stamped with a mark that distinguishes its origin from that of Eagle. The design trademark therefore affords no singular protection. If, however, I try to use such a pencil in
a mark of my own, then it does infringe.
2. It would be irresponsible IP counseling to not pursue both a design patent and product design trademark, even if the latter protection is as tenuous as you think.
True, but irrelevant. The issue is not IF you should apply for such a mark, but rather WHEN such a mark affords you protections against
the simple copying of the design. The Lanham Act does not bar simple copying. A design trademark does not restrict
manufacture. It restricts the use of that design
in a competing mark.
An iPhone knockoff is likely to have both the overall appearance of the iPhone (product design tmk) as well as the traditional Apple trademarks and not other model identifiers.
That's not the argument you presented, and even if we revise it to allow such an assertion, it does not help you much. If it infringes on their other trademarks, the case is won simply on those grounds. A court won't even get as far as a design trademark, because logo and product marks are infringed and that's the end of it. Courts stop once they've got enough information to adjudicate.
In one hand you have a genuine iPhone, touch screen side up (ie no other tmks or identifiers.
It is not in that case a genuine iPhone, as it would have all of its trademarked identifiers readily visible upon inspection.
If you're referring to an image of the product, you're back to
advertising, which IS the arena in which this trademark would be useful. But you're not talking about manufacture or sale in that instance.
In the other hand you have a good knockoff which looks just like the iPhone. Might the knockoff manufacturer be trying to deceive? Maybe there is even a slight difference. Is this confusing to customers? I think so.
If the mark is not sufficiently distinctive to be identified on its own, the mark cannot be granted on its face, but only through secondary meaning, which in turn throws up an
additional hurdle to "copying" because the mark is granted with the concession that it is
not distinctive and thus its protection is severely narrowed.
I'll try to briefly lay out support for my previously stated position, but really I think you should read the cases if you care about this field. If you get it, great, if not, proceed to rip it apart; I'll still think you're wrong and you'll still think I'm wrong.
I don't think you're wrong. I think you have a fundamental failure to cover the basics. Your arguments are not predicated on the realities of this situation, nor do they comport with the realities of IP defense structuring. You are simply regurgitating the superstructure of arguments that "sound" correct to you without an appreciation for or understanding of the underlying principles. You are applying fact-specific holdings with no regard
for the facts. You have yet to make a
legal argument.
Please note that the remedies being sought in the cases outlined below is not for D to stop using P's mark in advertising but to stop D from selling a product which P claims infringes against its product design trademark / trade dress.
Precisely! It follows the
Ashley Furniture elucidation--products WHICH DO NOT CARRY OTHER IDENTIFYING MARKS (in that case, furniture sets; below, high-end faucets) can rely on trade dress to find infringement. Also note that "trade dress infringement" and "design trademark infringement" are not the same thing, though you've attempted to lump them together.
Also note that the test you quote is
not the Lund test, but rather the
Two Pesos test. Were you an actual expert in the field, you'd know this.
"The claim for protection here comes not from
traditional marks such as names but from the very design of the
faucet itself -- that design is said to give the faucet its
identity and distinctiveness.
Yes. You are not adding anything to the discussion with this excerpt. This merely establishes the undisputed
nature of design marks and trade dress protection. While it takes up space and makes it look like you've made an actual response, it accomplishes nothing.
First, it's "its." Second, this is a restatement of prior precedent, and cannot be credited to
Lund.
We conclude that, to be inherently
distinctive, a product feature or a combination or
arrangement of features, i.e, a product configuration, for
which Lanham Act protection is sought must be (i) unusual
and memorable; (ii) conceptually separable from the product;
and (iii) likely to serve primarily as a designator of
origin of the product."
Your argument fails to meet all three standards posed in the case you yourself quote.
(i) The design is not unusual if not
precisely copied. The face of most HTC smartphones has followed this basic configuration for years. None of the knockoffs yet produced have replicated
exactly the one-button face. The silver and black theme is not unique to Apple or novel (contrast with "iPod White" which can be).
(ii) Conceptual separation from the product would lose
all distinctiveness whatsoever--it is only recognizable in the context of its own use.
(iii) The primary designators lie elsewhere in this product. It is primarily identified by "iPhone" in packaging, documentation, and electronic contexts, primarily identified by the Apple logo on the product itself, and only tangentially related to the overall design. The software interface of the display--a separate trademark to the one referenced in this thread--is instead the superior distinguishing mark. The trademark on that home screen design is useful against knockoffs, as are the iPhone and Apple logo trademarks. If you were to take the exact same hardware design and pop a Windows Mobile home screen on it, people would no longer recognize it as an iPhone. If you are considering the home screen trademark to be part of this mark, then I can see where you're coming from, but that is in point of fact a separate mark.
Here P was not successful either but the court discusses how a product might infringe a product design trademark by causing source confusion.
There's your first clue. You are citing losing cases and hoping that analytical frameworks can be your savior--unfortunately, you are divorcing said frameworks from the facts without establishing grounds to do so.
Ashley Furniture v. Sangiacomo, 1999
You're quoting a case I've already given you, and you're just throwing out words. I've already provided the analytical framework for these cases and conclusively demonstrated the functional deficiencies. You're also mangling the transition from "inherent distinctiveness" to "design trademarks"
"As noted above, the trade dress in such cases is not"the product
itself," but rather the nonfunctional aspects of the product that make
up its total image.
Exactly. The product is not the mark, which gets us right back to the still unanswered question of how you're getting around that.
A product bearing marks, as all of those in question do, cannot confuse as to origin where those marks contradict the idea that they originate from a third party. If the iPhone lacks an Apple logo and lacks the "iPhone" identifier and if it carries contrary marks, there is no possibility of confusion.
I'm truly unsure as to why you felt the need to latch onto your argument so tightly--there is no question as to legal protection for knockoffs through a number of the 200 patents and no fewer than four other trademarks on the iPhone, nevermind copyright protection and general trade dress course of trade arguments. Some of the pieces you quote from are taken out of context of this separation--trade dress infringement and design trademark infringement are not the same thing as you have implied throughout this post.
Given the clear analytical difficulty, the reticence of courts in enforcing design trademarks in general, jurisdictional differences in the level of protection thereto afforded, and the extremely high level of specificity required in establishing infringement, it's blatantly obvious that this is an inefficient and anemic tool for protecting against knockoffs.
It's admirable that you've been so insistent, but it would have been far easier had you simply realized earlier that your understanding is muddy at best and that Apple's property interests were already completely covered in this regard.
They have other trademarks, patents, copyrights, and general trade dress protection. The loophole closed here is in advertising. There was no chance of a product copying the iPhone design getting away but for this mark. This mark does not stop a single case of knockoff infringement, but it does stop a number of third-party advertising issues, marketing ploys, and accessory manufacturers. It's clear what the purpose was from the beginning.
", and which has in its stead a clear model identifier, does not and cannot confuse as to origin and thus does not infringe. The product may be manufactured and sold. The only applicable restrictions would be in advertising capacities. The Lanham Act only protects design trademarks where the failure to do so would confuse as to origin (i.e. where it is the ONLY identifier). "It does not prohibit copying per se. Rather, the statute only prohibits a copy that can be passed off as the product of the originator." 247 F. 299, 301.
