If, when you see a giant inflatable bird-shaped pool toy, you immediately wonder whether the shape of such a toy is protected under trademark law then you are reading the right blog post.  The U.S. District Court of Appeals for the Second Circuit (New York, Connecticut and Vermont) recently examined claims of infringement of inflatable flamingo pool toys in International Leisure Products v. Funboy (September 6, 2018). Specifically, ILP argued that Funboy infringed its trade dress rights covering an inflatable flamingo pool toy.

As background, trademark protection may apply to “trade dress,” a concept that encompasses the overall design an appearance that make the product identifiable to consumers.  Trade dress protection applies to a combination of any elements in which a product is presented to a buyer, including the shape and design of a product.  Such a shape or design can even be registered by the US Patent & Trademark Office if the owner can prove, at least, that the trade dress is nonfunctional and has acquired secondary meaning.  A trade dress has acquired secondary meaning when consumers associate the design features with a particular producer.  Some of the relevant factors for determining secondary meaning include the exclusivity, manner, and length of use of the trade dress.

In Adidas v. Sketchers (May 10, 2018), the US Court of Appeals for the Ninth Circuit (Alaska, Washington, Idaho, Montana, Oregon, California and Nevada) ruled that Adidas had valid trade dress protection on its Stan Smith sneaker through exclusive use since the 1970’s, considerable expenditure to promote the show, and significant recognition from celebrities and other influencers.  By contrast, in the International Leisure Products case, the Second Circuit ruled that several of ILP’s alleged trade dress elements contain subjective descriptors like a “pleasing appearance” or an “aesthetic proportion.”  The Second Circuit explained that they typically refuse protection where a claimed trade dress lacks sufficiently objective source identifiers.  Additionally, some of ILP’s alleged trade dress elements contained optional or alternative features without objective metrics, such that there were multiple possible combinations of optional features, making it difficult to discern ILP’s description of a single distinctive look.

As a result, ILP’s swan-shaped pool float represents the type of design choice that is almost invariably intended to render the product itself more useful or appealing rather than to identify the product’s source.  And, source identification is the key consideration for trademark law’s twin goals of protecting consumers from confusion and protecting manufacturers from unfair competition.  For this reason, ILP was essentially seeking protection for a trade dress that would encompass any bird-shaped pool float with even a passing resemblance to its giant swan.  So, ILP’s claimed trade dress was impermissibly overbroad for the purposes of this infringement suit.  Perhaps, if ILP had more clearly tailored its described language to be a specific design that indicates the source, the result would have been different.  In fact, the US Patent & Trademark Office requires such a single-design description when examining applications for trade dress registration.

#tradedress

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