Fighting Fakes

Current Trends

In general, the trend is for courts to provide more and more protection for the rights of the creator. In March 1995, the U.S. Supreme Court ruled that even the color of a product may qualify as legally protected trade dress if that color has become specifically associated in the public's mind with a particular company.

"A trademark's ultimate function is to indicate the source of products in the marketplace," says Maxine Lans Retsky, an intellectual property attorney in Chicago. "Trademarks enable your customers and potential customers to identify your company as the source of your products." Accordingly, business owners have often argued that the law should protect the color of their products because it serves the critical function of indicating the source, even without accompanying shapes, words or symbols. Courts frequently rejected that argument, noting the limited number of available colors and the difficulty of determining which exact shades should be protected.

Then Qualitex Co. sued a competitor over their use of green-gold dry-cleaning pads that looked identical to the pads the company had been using exclusively for almost

40 years. After the trial court ruled in Qualitex's favor and the appeals court reversed the decision, the Supreme Court decided to put an end to years of inconsistent rulings. In a unanimous decision, the court ruled that there is no legal rule preventing color by itself from serving as a trademark. Since Qualitex's green-gold color identified the source of the pads and served no function in the dry-cleaning process, it was allowed to serve as a trademark.

This doesn't mean color will always be protected. "For certain products, uniformity of color is a benefit to consumers," Retsky says. "For example, it would be confusing to have the same drug come in different colors because color is used to identify drugs."

On the other hand, the results of another recent case lean toward allowing newcomers to ride on an established brand's coattails. Conopco Inc., marketer of Vaseline Intensive Care Lotion, sued to stop the marketing of a private-label look-alike lotion. Conopco had just reformulated its product and retooled its image with a new bottle and a $35 million ad campaign when the Benjamin Ansehl Co. launched a private-label lotion in a similarly shaped bottle in the same blue, green and yellow colors arranged in a similar layout.

Although the trial court favored Conopco, the Federal Circuit Court overturned the decision. "It's a decision many view as a fairly strong defeat for national manufacturers," Retsky says. The circuit court noted the house brand clearly displayed the retailer's own widely recognized trademark and invited consumers to compare the product with Vaseline Intensive Care Lotion. Accordingly, the chance that consumers would be confused about the source of the product is slim. This case, though, is probably not the last word we'll hear on the subject.

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This article was originally published in the February 1996 print edition of Entrepreneur with the headline: Fighting Fakes.

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