Trade Dress and Copyright
by Pamela Chestek • October 27, 2008 • trademark
This is the final post in the series on Tacori Enterprises v. Rego Manufacturing. As well as claiming copyright in the ring design, Tacori also claimed that the ring design was Tacori’s protected trade dress and sued for trademark infringement. Tacori has filed a trademark application for registration of the trade dress in the ring design:
The trade dress is described as “the appearance of portions of two essentially concentric rings, with one of the rings having a larger diameter than the other. Embedded between the rings are repeating semi-circles or arcs which appear contiguous to each other. A space is created between the contiguous semi- circles or arcs. The dotted lines show the placement of the mark on the goods.”
At the time of the decision, Tacori had received a Notice of Publication for the design but the design had not registered (ed. note: registration has been opposed by a company called EMMI, Inc. and the opposition is stayed pending resolution of a pending federal case between EMMI, Inc. and Tacori in the Central District of California, Civ. No. 08-00552. The court in this case also mentions two more pending consolidated cases in the Central District of California, between Tacori and Beverlly Jewellery Co., Civ. No. 06-5170, and Pink Diamond, Civ. No. 07-3939).
Tacori submitted evidence through an affidavit from Tacorian that the mark had acquired distinctiveness, including exclusive use since 1999, emails and letters from consumers recognizing the design as a source indicator, $6 million spent in advertising, $30 million in sales, unsolicited media coverage, use by others of the term “Tacori inspired” to describe similar designs of jewelry, and over 125 cease and desist actions. (The evidence of secondary meaning submitted in the registration process can be found here in the December 18, 2006 Response to Office Action).
Rego Manufacturing asked for summary judgment on the trade dress claim on two theories: first, that the Tacori couldn’t assert a trade dress infringement claim without a registration; and second, that the trade dress is not distinctive. It failed on both theories. Tacori’s infringement claim was under § 43(a) for infringement of an unregistered trademark, not under § 32 for infringement of a registered trademark, so it stands. Tacori had also offered enough evidence to make acquired distinctiveness a question of material fact sufficient to defeat summary judgment.
Tacori Enter. v. Rego Mfg., Civ. No. 1:05cv2241, 2008 U.S. Dist. LEXIS 73686 (D. Ohio Sept. 25, 2008)
© 2008 Pamela Chestek