CHAPTER 11 - § 11.05

• Jurisdiction: United States

§ 11.05 GENERICNESS

Genericness is a concept borrowed from trademark law and applied by a number of courts to trade dress cases. Generally, these courts hold that "a package or product shape can lack protection as being 'generic' if the trade dress is defined as a mere product theme or style of doing business, or is such a hackneyed or common design that it cannot identify any particular source."¹⁴¹ As one court noted, "[A] generic product design is not entitled to protection because, by definition, it 'can never meet the distinctiveness element.'"¹⁴² Another court noted that there is a close relationship between functionality and genericness.¹⁴³

Given these apparent overlaps, not all commentators are comfortable with the concept of generic trade dress. One commentator (William E. Levin) has suggested that "the concept of genericness has little application to trade dress. . . . 'Generic' trade dress is an oxymoron."¹⁴⁴ Levin acknowledges, however, that the Supreme Court's Two Pesos decision "generally equated trade dress with trademarks, and incorporated the traditional [Abercrombie] trademark spectrum of classifying marks from arbitrary or fanciful to generic."¹⁴⁵ Accordingly, the genericness doctrine persists in the courts, as detailed below.

For example, in Jeffrey Milstein v. Greger, Lawlor, Roth, the Second Circuit held that "[j]ust as the first company to depict a heart and arrow on Valentine's cards, or to produce cards depicting tabby cats could not seek protection for those designs because they are concepts, defined abstractly, so [plaintiff] cannot obtain protection for its general idea of creating [greeting] cards out of die-cut photographs" that outlined an animal, person, or object.¹⁴⁶ The court noted that "just as copyright law does not protect ideas but only their concrete expression, neither does trade dress law protect an idea, a concept, or a generalized type of appearance."¹⁴⁷ Two years later, the Second Circuit cited the Milstein analysis, noting that just as "trademarking a generic term would create a monopoly in a necessary word or phrase, granting trade dress protection to an ordinary product shape would create a monopoly in the goods themselves."¹⁴⁸

However, the Fourth Circuit applied the doctrine of genericness to prevent trade dress rights accruing in the interior design of rival ale houses.¹⁴⁹ In Ale House Management v. Raleigh Ale House, the court noted that the interior features of the plaintiff's bar—"centrally located rectangular bar with two types of seating on either side and television monitors, arcades, and pool tables, decorated generally in wood and brass"—were features shared by many other competitors.¹⁵⁰ The court refused to find such a design "unique or unusual."¹⁵¹ Perhaps most damaging to the plaintiff was the fact that "its own configurations differ[ed] from facility to facility."¹⁵²

Similarly, the Sixth Circuit noted that "generic product configurations are not protectable as trade dress under [the Lanham Act]."¹⁵³ In Abercrombie & Fitch Stores v. American Eagle, the court held that a clothing catalog comprised valid trade dress (and was not generic), but declined to find infringement.¹⁵⁴ The court reasoned that "no designer should have a monopoly on designs regarded by the public as the basic form of a particular item."¹⁵⁵

In Sunrise Jewelry v. Fred, the Federal Circuit employed interesting logic in addressing genericness.¹⁵⁶ The court reasoned that "the term 'generic name' as used in [Lanham Act § 14(3)] must be read expansively to encompass anything that has potential but fails to serve as an indicator of source, such as names, words, symbols, devices, or trade dress."¹⁵⁷ Thus, the court vacated and remanded a Trademark Trial and Appeal Board (TTAB) decision refusing to cancel an incontestable registration for a "metallic nautical rope design" for jewelry (shown below) for genericness.¹⁵⁸ The court instructed the TTAB to determine on remand whether the product design was capable of designating source, and noted that "a consumer could associate the...