Bloomberg BNA’s Patent Trademark & Copyright Law Daily™is the IP industry’s premier news service, offering objective, timely,and reliable daily news coverage and commentary from leading IP law...
April 4 — A dispute over the formatting of test results between two companies that help health care providers monitor whether patients are taking their pain medications will continue, after an April 4 ruling by the U.S. Court of Appeals for the 9th Circuit.
This is the first time that the 9th Circuit has addressed the question of whether a layout or publication format is necessarily functional for a trade dress infringement claim.
The court kicked the case back down to the trial level after ruling that the precise layout of urine test results might not be functional for the purposes of a trade dress infringement claim.
Even if comparing test results is a functional matter, the court said, that kind of information “could be presented in many ways” and it is up to a jury to decide whether the layout in this particular case is functional and not protectable as trade dress.
A trade dress infringement claim is similar to a trademark infringement claim in that it is asserting that a competitor is creating a likelihood of confusion.
But in a trade dress case, what is being fought over is not a trademark—such as a brand name or a logo—but rather a product's design or packaging.
Under Section 43(a)(3) of the Lanham Trademark Act of 1946, 15 U.S.C. §1125(a)(3), in order for a company to claim that a certain configuration is distinctive trade dress, it has to show that the configuration is nonfunctional.
If the configuration has a practical purpose then competitors can't be stopped from using it.
In this case, Millennium Laboratories Inc. of San Diego offers pain medication monitoring products. It claimed that in June 2011, it redesigned its R.A.D.A.R. reports “to include a specific combination of graphs and charts.”
Judge Michael M. Anello of the U.S. District Court for the Southern District of California granted summary judgment in favor of Ameritox after deciding that the layout of the report was functional.
However, the appeals court said that in this case, summary judgment was not appropriate because there were genuine outstanding issues of material fact.
Specifically, the court said that a jury could legitimately conclude that some of the features of the R.A.D.A.R. reports might not be functional, particularly given that “many alternative designs were available.”
A jury would also be able to look at whether Millennium itself had advertised the layout as a whole as having functional benefits, the court said.
Judge Ronald M. Gould issued the court's ruling, which was joined by Judges Susan P. Graber and Wiley Y. Daniel.
Jones Day represented Millennium. Perkins Coie LLP represented Ameritox.
To contact the reporter on this story: Anandashankar Mazumdar in Washington at email@example.com
To contact the editor responsible for this story: Mike Wilczek in Washington at firstname.lastname@example.org
Text is available at: http://src.bna.com/dQX.
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to email@example.com.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to firstname.lastname@example.org.
Put me on standing order
Notify me when new releases are available (no standing order will be created)