Non-Traditional Trademarks Unplugged: Or Should Trademark Law Protect Aesthetic Product Features?

The next CIPP/Lallemand Seminar will feature Irene Calboli on Non-Traditional Trademarks Unplugged: Or Should Trademark Law Protect Aesthetic Product Features?

The event is open to all and CLE accreditation has been requested. There is a $40 charge for lawyers seeking CLE accreditation.

Abstract

In the past decades, the scope of trademark protection has exponentially expanded. Today, a growing list of product features—including colors, shapes, smells, gestures, and even video clips—can be protected as trademarks based on the assertion that these signs are “distinctive,” that is, that they are capable of distinguishing products in the marketplace. However, the protection of these non-traditional marks has often been met with controversy, particularly by the courts in several countries. In her presentation, Dr. Calboli will address the problems related to the protection of non-traditional trademarks—for competitors and the public—in light of some of the most controversial cases litigated in recent years and currently pending in front of the courts. Specifically, she will note that courts across several jurisdictions have resorted, or have considered resorting, to the doctrine of aesthetic functionality to counter the trend of expansive trademark protection and to prevent granting trademark rights in aesthetically appealing product features that could put competitors at a significant disadvantage in the marketplace. This approach, she contends, is a welcome approach, and one courts should continue to implement. Likewise, aesthetic functionality should also be considered by trademark examiners. At this time granting trademark registrations as trademark law is not supposed to protect aesthetic product features—even when these features are or could become distinctive of the products in question. Instead, these features should be protected under other types of intellectual property rights, such as design and copyright law. In her presentation, Dr. Calboli will conclude that allowing protection for aesthetic product features under trademark law could easily translate in granting perpetual monopolies to a few companies on important elements of style and fashion, which would prevent competitors to use the same or similar features for their products also when consumers would not be confused as to the origin of the products.

About the presenter

Irene Calboli is Lee Kong Chian Fellow, Visiting Professor, and Founding Deputy Director of the Applied Research Centre for Intellectual Assets and the Law in Asia at Singapore Management University School of Law. She is also Professor of Law at Texas A&M University School of Law and Transatlantic Technology Law Forum Fellow at Stanford University. Until May 2015, she was Visiting Professor at the Faculty of Law of the National University of Singapore and Professor at Marquette University Law School where she was the Founding Director of the Intellectual Property and Technology Program. She holds degrees from the Faculty of Law of the University of Bologna, the London School of Economics and Political Science, and Queen Mary College London. Her most recent books include Diversity in Intellectual Property: Identities, Interests, and Intersections (Cambridge University Press, 2015, edited with S. Ragavan) and The Law and Practice of Trademark Transactions (Edward Elgar, 2016, edited with J. de Werra). She is an elected member of the American Law Institute, and currently serves as a member of the Executive Committee of the Intellectual Property Section of the Association of American Law Schools, a member of the Executive Board of the European Policy for Intellectual Property Association (EPIP), and the Co-Chair of the Professor Membership Team of the Academic Committee of the International Trademark Association (INTA). She is also a Delegate to the American Society of Comparative Law, and a member of the International Law Association (American and Singapore Branches), the International Association for the Advancement of Teaching and Research in Intellectual Property (ATRIP), and the Association Litteraire and Artistique Internationale USA (ALAI-USA).

This content has been updated on April 4, 2016 at 9:22.