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montysimmons
montysimmons, Patent Prosecutor
Category: Intellectual Property Law
Satisfied Customers: 328
Experience:  Electrical Engineer, South Carolina Attorney, Member of US Patent Bar
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Hi again, about the civil lawsuit for trade dress. I only have

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Hi again, about the civil lawsuit for trade dress. I only have about 27 orders for the product and have taken the product off my website.

What kind of damages would he be looking for, or get from such a suit? Would he need to prove that all of those 27 people were confused by the labeling even though many purchased my product along with his product in the same order?

montysimmons :

Unlikely he will sue over 27 orders.

montysimmons :

That said, how much money are we talking about with regard to 27 orders.

montysimmons :

I may have spoken too soon.

montysimmons :

Background

montysimmons :

The federal claims are
brought pursuant to the Lanham Act, which provides protection against “trade dress”
infringement and dilution. 15 U.S.C. § 1125(a) & 1125(c).

montysimmons :

“Trade dress” is defined as “the design and appearance of a product together with the elements making up the overall image that serves to identify the product presented to the consumer.” Yankee Candle Co. v. Bridgewater Candle Co., LLC, 259 F.3d 25, 37-38 (1st Cir. 2001). Trade-dress protection is intended to protect “that which identifies a product’s source.” I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 35 (1st Cir. 1998).

montysimmons :

In order for trade-dress to be protected, a plaintiff must prove that the dress is, among other things, non-functional. Yankee Candle, 259 F.3d at 38.

montysimmons :

A trade dress is considered functional “if it is essential to the use or purpose of the article or if it affects the cost or quality of an article.” TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 32 (2001).

montysimmons :

Trade-Dress can also be protected by State Common Law.

montysimmons :

Although the Federal trade-dress and State trade-dress claims are somewhat different, they both typically include the requirement that the claimed trade dress be non-functional.

montysimmons :

So what do they have to prove for trade-dress infringement

montysimmons :

lots of things

montysimmons :

That the trade-dress is non functional

montysimmons :

Trade dress is the total image of the product, including all of its identifying characteristics such as size, shape, package, and sales techniques, which make it distinguishable from other products in the market.

montysimmons :

Thus there are three primary things to prove

montysimmons :

In order succeed on a claim of trade dress infringement under Section 43(a), a plaintiff must prove: “

1) that the trade dress in question is distinctive in the marketplace, thereby indicating the source of the good it dresses,

2) that the trade dress is primarily nonfunctional, and

3) that the trade dress of the competing good is confusingly similar.”
Abercrombie & Fitch Stores, Inc. v. American Eagle Outfitters, Inc., 280 F.3d 619, 629
(6th Cir. 2002).

montysimmons :



Such can get expensive even in state court.

montysimmons :

if the damages are low, risk of actual suit being filed is low.

montysimmons :

If you have more questions, please ask.

montysimmons and other Intellectual Property Law Specialists are ready to help you

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