Don’t Forget Trade Dress In Your Manufacturing Agreements
by Pamela Chestek • January 26, 2011 • trade dress, trademark
Tecnimed SRL v Kidz-Med, Inc. is a manufacturer-distributor dispute with a bit of a twist – the agreement was clear about who owned the trademark (the manufacturer), but it didn’t address who owned the trade dress for the product.
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Original packaging |
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Distributor’s later packaging |
Kidz-Med claimed that it had created the trade dress for the packaging and therefore owned it. On a motion for preliminary injunction, the court used the Wrist-Rocket and Sengoku factors to decide who owned the trade dress. Their agreement was no help; it didn’t address trade dress. In the absence of an agreement the manufacturer is presumed to own the mark, which can be rebutted by considering four factors: “(1) which party invented and first affixed the mark onto the product; (2) which party’s name appeared with the trademark; (3) which party maintained the qualify and uniformity of the product; and (4) with which party the public identified the product and to whom purchasers made complaints.”
In a January 2010 press release concerning the Thermofocus, Kidz-Med’s Director of Business Development falsely suggested that Kidz-Med was planning to release an updated version of the Thermofocus, by stating that “[w]e are excited to see that the media A-list are featuring our non-contact, hygienic thermometer [the Thermofocus] as a must-have during the flu season. Our new noncontact thermometer will be launching this year, and we hope for similar attention to be drawn to it too.” |
Polaroid factors applied and Tecnimed ends up with the winning tally – “bad faith” alone might have been enough.
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