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09-2155 Jay Franco & Sons, Inc., v. Franek

By: dmc-admin//August 11, 2010//

09-2155 Jay Franco & Sons, Inc., v. Franek

By: dmc-admin//August 11, 2010//

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Intellectual Property
Trademarks; functionality

A round beach towel is not a valid trademark.

“Franek wants a trademark on the circle. Granting a producer the exclusive use of a basic element of design (shape, material, color, and so forth) impoverishes other designers’ palettes. See, e.g., Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527 (Fed. Cir. 1994) (black color of boat engines is functional because it is compatible with boats of many different colors). Qualitex’s determination that ‘color alone, at least sometimes, can meet the basic legal requirements for use as a trademark’ (514 U.S. at 166), means that there is no per se rule against this practice. See also Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277, 299 (7th Cir. 1998). The composition of the relevant market matters. But the more rudimentary and general the element-all six-sided shapes rather than an irregular, perforated hexagon; all labels made from tin rather than a specific tin label; all shades of the color purple rather than a single shade-the more likely it is that restricting its use will significantly impair competition. See, e.g., Keene, 778 F.2d at 343; Lorillard v. Pride, 28 F. 434 (C.C.N.D. Ill. 1886); Saint-Gobain Corp. v. 3M Co., 90 U.S.P.Q. 2d 1425 (T.T.A.B. 2007). Franek’s towel is of this ilk. He has trademarked the ‘configuration of a round beach towel.’ Every other beach towel manufacturer is barred from using the entire shape as well as any other design similar enough that consumers are likely to confuse it with Franek’s circle (most regular polygons, for example).”

Affirmed.

09-2155 Jay Franco & Sons, Inc., v. Franek

Appeal from the United States District Court for the Northern District of Illinois, Dow, J., Easterbrook, J.

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