An INTA Stalwart
For more than two decades, Theodore ( ‘Ted’) Davis, Jr., partner, Kilpatrick Townsend & Stockton LLP (US), has delighted Annual Meeting registrants with his annual review of key decisions rendered by the U.S. courts and the Trademark Trial and Appeal Board. This year's session, much like previous ones, is expected to draw crowds. Sarah Morgan reports.
With more than 30 years of practicing law under his belt and the co-author since 2000 of The Trademark Reporter’s United States Annual Review, Mr. Davis is the perfect person to shoulder the important job of summarizing 12 months of case law into a concise hour-long session.
He and John L. Welch, counsel, Wolf, Greenfield & Sacks, P.C. (US), will present an Annual Review of U.S. Federal Case Law and TTAB Developments on Friday, November 19, at 2:00 pm–3:00 pm (EST). Mr. Welch, who has co-authored the United States Annual Review for nearly a decade, has been sharing this session’s stage since 2012.
The session has, historically, been either the last or one of the last of the Annual Meeting. This year follows the same pattern, with it slated as the final general session of the Meeting.
“There are scenarios in which, if you’re the last speaker, you are what they call the ‘anchor witness.’ If you’re testifying before Congress, it’s a sign of extreme disfavor, but I like to think that’s not the case for this particular session,” said Mr. Davis, who has volunteered in various capacities at INTA since 1991.
From writing and editing articles for The Trademark Reporter to chairing various INTA committees, and sitting on the INTA Board of Directors, as well as the Executive Committee of the Board of Directors, Mr. Davis has had a profound influence on the Association. Indeed, in 2017, he was awarded the prestigious President’s Award for his outstanding contributions to the field.
“INTA has been very important to my practice, and it is very important to our firm’s trademark practice. I have attended the Annual Meeting for some time now, even before winding up with this spot, and it has always been a very rewarding experience,” he said.
“INTA has been very important to my practice, and it is very important to our firm’s trademark practice. I have attended the Annual Meeting for some time now, even before winding up with this spot, and it has always been a very rewarding experience.”
Theodore (‘Ted’) Davis, Jr., partner, Kilpatrick Townsend & Stockton LLP (US)
The Supreme Court’s Agenda
In contrast to the situation in recent years, Mr. Davis and Mr. Welch will not have any U.S. Supreme Court opinions to report on, and there are no future opinions to cover, since the Supreme Court has not recently accepted a trademark case for a review.
Nonetheless, according to Mr. Davis, there are some “questions that could support credible certiorari petitions and present very credible cases that the lower federal courts are split on particular issues, which may well attract the Supreme Court’s attention.”
The definition of functionality is one such issue. With two opinions from the U.S. Courts of Appeals in the past year adopting “something of a throwback definition,” functionality could soon find itself on the Court’s agenda.
In early 2021, the U.S. Court of Appeals for the Third Circuit again rejected trade dress protection for the well-known POCKY cookie design in Ezaki Glico Kabushiki Kaisha v. Lotte Int’l Am. Corp. The Third Circuit had already heard the case on appeal, but after a request for rehearing, the court issued a revised decision, clarifying its initial analysis of functionality.
While the plaintiff’s trade dress in the chocolate-dipped cookie stick was the subject of two incontestable federal registrations, the Third Circuit affirmed that the trade dress was useful and therefore functional.
“The Third Circuit doesn’t get there by seizing on the existence of a related utility patent, which I think most other courts would have done. But the Third Circuit’s analysis is very much that this configuration is useful. It aids the consumer in eating this thing, and because of that, it is functional as a matter of law,” Mr. Davis explained.
The Third Circuit’s approach of “because it’s useful, it’s functional as a matter of law, and that’s the end of the inquiry” contrasts with how a lot of other circuit courts approach this matter, he said, adding that other courts “generally require more than mere usefulness.”
Mr. Davis added: “There generally has to be a showing that alternative designs don’t and can’t do this better. In other words, functionality is tied, in some sense, to the configuration of the claimed trade dress feature doing something better or doing something more efficiently or more economically.”
Japanese multinational food company Ezaki Glico Kabushiki Kaisha filed a petition for certiorari in June 2021.
“There generally has to be a showing that alternative designs don’t and can’t do this better.”
Separately, the U.S. Court of Appeals for the Second Circuit considered functionality in the case of Sulzer Mixpac AG v. A&N Trading Co.
The court found that the plaintiff’s use of yellow, teal, blue, pink, purple, brown, and white on mixing tips (which are used by dentists to create impressions of teeth for dental procedures) was functional, as the colors signify diameter and enable users to match a cartridge to the appropriate mixing tip.
“Again, you wind up with a finding of functionality as a matter of law, primarily because the colors did something,” said Mr. Davis, who expects the plaintiff to file a petition of certiorari shortly.
On the plaintiff’s chances in both cases of a successful petition before the Supreme Court, Mr. Davis is not effusive. “The Supreme Court, historically, has not been favorably inclined to claims of trademark protection, especially product configurations,” he said.
He concluded: “It does have some opinions recognizing the eligibility of nontraditional marks like configurations and colors for protection. But in the aggregate, its decisions are not entirely favorable to plaintiffs.
“As with any issue, there’s no guarantee that, even if you convince the Supreme Court to review a case, that you’re going to be happy with the outcome. But all of those things remain to be seen.”
Footage used under license from Adobe Stock / Gitanas
Thursday, September 24, 2021
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