Asked in Copyright, Intellectual Property and Trademark

Q: Can an item without a logo or symbol be a trademark infringement?

I make ornaments using commercial clear ornaments & books that I buy and cut apart & curl into ribbons to put into the ornament. I do not advertise them by the book name so that I don't risk infringing on anyone's copyright or IP even though the books I use are public domain.

I've been selling the ornaments on Etsy since 2015. A competing seller reported all of my listings for "infringing on her trade dress" and the "trademark consists of the image/appearance of an ornament filled with curled cut pages of literary works". As far as I understand trademark is a brand identity (logo, name, catchphrase) not an object and trade dress is distinct packaging for a product.

Can a nondescript item be trademarked?

To note I had previous issue with this seller reporting me for copyright infringement of her ornaments, right before Christmas 2016, & it was thrown out as I confirmed and reported to Etsy from the US Copyright office that ornaments made like this cannot be copyrighted.

1 Lawyer Answer
Bernard Samuel Klosowski
Bernard Samuel Klosowski
  • Trademarks Lawyer
  • Greenville, SC

A: "Can a nondescript item be trademarked?" Trade dress is a bit different than its more common cousins, word marks (e.g., "Apple") and stylized (special form) marks (like the Nike "swoosh"), which are usually tagged or stamped on their associated products. Trade dress is a kind of trademark relating to something's appearance. Examples of trade dress are customized packaging (as you note), a product shape and color, or the appearance/layout of a store (like the Pizza Hut roof).

Essentially to function as a trademark, trade dress has to identify the source of goods as coming from a SINGLE provider/seller thereby distinguishing its goods/services from others'. For instance, when you walk in that pizza place with the unusual roof, you know that you'll be getting a particular kind of pizza from one particular source (Pizza Hut) and not from Papa Johns, Dominos, etc. Thus, trade dress, to be protectable (i.e., exclusively belonging to a single owner) has to be distinctive, be used in commerce, serve as a single source identifier, and be primarily nonfunctional.

More particularly, to determine if there's trade dress infringement, courts will determine if consumers are likely to be confused into thinking that two different products are coming from the same source by considering several factors such whether the other seller has a registration on the trade dress and/or whether the alleged trade dress has become distinctive over time, the similarity of the designs in the marketplace (i.e., next to each other on the shelf), consumer sophistication, intent (e.g., willful copying), time of use without actual consumer confusion, and functional aspects of the design (does it yield a utilitarian advantage, are alternative designs available, etc.).

Bottom-line: if there's no registration and the alleged design has been used for years by other parties such that consumers don't associate "ornament[s] filled with curled cut pages of literary works" as being distinctive and coming from a single source, then infringement seems unlikely. But specific facts should be considered by an intellectual property attorney to fully understand the pros/cons and to make an informed decision.

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