CHAPTER 1 - § 1.03

• Jurisdiction: United States

§ 1.03 THE TRADEMARK ACT OF 1905

Due to the perceived inadequacies of the Trademark Act of 1881, Congress passed the Trademark Act of 1905, which allowed "fanciful and arbitrary [marks]" to be federally registered.⁴⁰ The limitation of statutory protection to "fanciful and arbitrary" marks was a clear nod to the prerequisite of secondary meaning. The Trademark Act of 1905 left many trademarks out in the cold, such as trademarks comprising "personal names of individuals, firms, or corporations."⁴¹ In addition to being "fanciful and arbitrary," marks had to be in use ten years prior to registration for enforceability.⁴² These stern prerequisites limited most (if not all) attempts to register trade dress under the Act. These changes also added confusion to trade dress enforcement, in that plaintiffs would often make trade dress claims under the Trademark Act, whereas their claims should have resided in the common law of unfair competition.

For example, in Kellogg Co. v. Nat'l Biscuit Co., the plaintiffs made patent, trademark, and unfair competition claims for the shape of a shredded wheat biscuit.⁴³ The Supreme Court focused on the container used to sell the shredded wheat (i.e., a cereal box), in addition to the shredded wheat food product itself. In finding no unfair competition, the Court stated that there was no consumer confusion due to the look, layout, and lettering of the box.⁴⁴ Further, the Court indicated that shredded wheat was sold within specially decorated containers almost 100 percent of the time. Therefore, consumer confusion was unlikely, and Kellogg was not engaging in deception.⁴⁵

As to the shape of the shredded wheat, the Court appeared to find that such protection fell into the public domain with the expiration of Kellogg's patents:

The plaintiff has not the exclusive right to sell shredded wheat in the form of a pillow-shaped biscuit—the form in which the article became known to the public. That is the form in which shredded wheat was made under the basic patent. The patented machines used were designed to produce only the pillow-shaped biscuits. And a design patent was taken out to cover the pillow-shaped form. Hence, upon expiration of the patents, the form, as well as the name, was dedicated to the public. ... Kellogg Company was free to use the pillow-shaped form, subject only to the obligation to identify its product lest it be mistaken for that of the plaintiff.⁴⁶

However, the Court also noted that the design patent at issue had been previously declared invalid for lack of novelty. As a result, the Court's comments about the relationship between trade dress and design patents are dicta. Additionally, the Court noted the functionality of the pillow-shaped biscuit, which would make it incapable of trade dress protection (as discussed in more detail in Chapters 5 and 6).⁴⁷ In fact, virtually every court since Kellogg has found that trade dress protection can exist for a product beyond the expiration of a design patent.⁴⁸ Kellogg may be considered one of the first true trade dress cases, as it squarely addressed both product packaging (i.e., the look and layout of the box) and product configuration (i.e., the shape of the shredded wheat cereal), concepts which predominate in trade dress law today. One could argue that the claims and analysis in Kellogg set the stage for modern trade dress litigation.

Another notable case during the early development of trade dress law was Centaur Co. v. Marshall, where an injunction bid relating to competing product labels was denied.⁴⁹ Both Centaur and the Marshall sold a product called Castoria (a laxative for children) with labels covering the outside of the medicine bottle.⁵⁰ Centaur sought to enjoin Marshall from covering their medicine bottles with wrappers that were in some ways similar to Centaur's wrappers.⁵¹ Centaur provided no evidence of deception, leaving the court to decide whether the wrappers were similar enough to create confusion.⁵² The labels are shown below:

In resolving the case, the court focused on the second comer's deceit, stating:

The deceit or the probable deceit, of the purchaser, so that he buys, or probably will buy, the articles of one manufacturer or vender in the belief that they are those of another, is a sine qua non of such a suit, because everyone has the undoubted right to sell his own goods or goods of his own manufacture as such, however much such sales may damage or injure the business of his competitors.⁵³

The court went on to state that everyone has the right to sell medicine under the name Castoria.⁵⁴ The court noted, however, that it is the consumer's duty to inspect the label.⁵⁵ The only duty of the manufacturer is to construct a label that allows a consumer to identify the manufacturer of the product.⁵⁶ Since the Marshall label clearly indicated that the product was from Kansas City, the court found confusion unlikely.⁵⁷ That is, "the radical differences between the wrappers are so marked and striking that such a purchaser can hardly mistake the one for the other."⁵⁸ Based on these factors, the court found that entering an injunction against Marshall would be improper.

From 1881 to 1946, courts enforced trade dress with a focus on consumer confusion and the intent of the defendant as described in Merrick, Kellogg, and Centaur. For example, in Elizabeth Arden, Inc. v. Frances Denney, Inc., the plaintiff claimed that the defendant copied the trade dress of its beauty products—the shape, color combinations, and arrangement of goods.⁵⁹ The plaintiff also claimed that these attributes of the products, including their arrangement, had acquired secondary meaning and that customers relied on such when purchasing the products.⁶⁰ In affirming the trial court ruling in...