Patent It Yourself - PDF Archive

ChaPter 1 | INTRODUCTION to PATENTS and Other INTELLECTUAL PROPERTY | 29
law) rights, the federal “false-designation-of-origin”
statute (15 USC 1125(a)), and state unfair competition
statutes. One example of a state statute is California’s
Consumer’s Legal Remedies Act (Civil Code §§ 1750-
1784 and Calif. Code of Civil Procedure § 1770), which
prohibits 20 categories of illegal acts, including passing
off goods or services as those of another or with a
deceptive representation, such as a false designation of
geographical origin.
• Unfair competition can be used to cover such items as
advertising symbols, methods of packaging, slogans,
business names, “trade dress” (that is, anything
distinctive used by a merchant to package or house its
goods, such as the yellow container that has come to
be identified with Kodak film), and titles. Also, Bette
Midler successfully sued an advertising agency for
using a singer whose voice sounded like Ms. Midler’s.
Mother Fuddrucker’s restaurants sued a competitor
that copied Mother’s distinctive restaurant layout.
And the owners of the Pebble Beach, California, golf
course sued a golf course in Texas for copying Pebble
Beach’s distinctive layout. In other words, when the
characteristics of a product or service aren’t distinctive
or defined enough to be considered a trademark, then
unfair competition may be the appropriate way to
cover it.
• If an injured party can prove that a business has
engaged in unfair competition, a judge will issue an
injunction (legal order) prohibiting the business from
any further such activity or defining what the business
can and can’t do. Further, the court may award
compensation (monetary damages) to the injured
business (that is, the business that lost profits because
of the public’s confusion).
2. How Does the Law of Unfair
Competition Affect You?
There are several ways in which the law of unfair competition
can affect you.
• If you already have a product or service you find has
been copied or pirated, and the traditional methods
(patents, copyrights, trademarks, and trade secrets) are
no help (perhaps because it’s not patentable or it’s too
late to patent it, it doesn’t qualify under the copyright
or trademark laws, or it doesn’t qualify as a trade
secret), you still may be able to get relief under the
doctrine of unfair competition.
• If you’re contemplating coming out with a product
or service, try to make it as distinctive as reasonably
possible in as many ways as reasonably possible so
that you’ll easily be able to establish a distinctive,
recognizable appearance (termed in the law as
“secondary meaning”). For example, you would be
wise to use unique and distinctive packaging (“trade
dress”), unique advertising slogans and symbols, a
unique title, a distinctive business name, and a clever
advertising campaign. And the more you advertise
and expose your product, and the more distinctive
(different) it is, the stronger your unfair competition
rights will be.
3. Comparison of Unfair Competition
With Design Patents
Some inventors confuse the trade dress area of unfair
competition law with design patents. Trade dress refers to the
distinctive appearance of a business, a product, or product
packaging, where the appearance distinguishes the product
or business from other similar products or businesses
but isn’t significant or specific enough to be considered a
trademark. The coloring of a package or label, or the layout of
a business, are good examples of distinctive trade dress.
Patentable designs, on the other hand, relate to the
appearance of an article that enhances its aesthetic appeal,
which is more than mere surface ornamentation and which
is novel and unobvious. Examples are a modernistic lamp
design and the pattern of a fabric. While trade dress can
be mere coloring, surface ornamentation, or a general
appearance, a design patentable invention has to be a
shape or appearance of a specific article which is more
than a surface appearance, which relates to the overall
appearance of the article, and which is different enough to
be considered unobvious.
S. Acquisition of Offensive Rights in
Intellectual Property—Summary Chart
The chart on the next page summarizes how an inventor
or creator should acquire offense rights in every type of
intellectual property.
T. Summary of Legal Remedies for
Misappropriation of Various
Types of Intellectual Property
Now that you’re familiar with all of the types of intangible
property, the chart below summarizes how to select the
appropriate remedy for any type of intellectual property
dispute.