It’s not a trademark just because it’s yours

Rebecca Tushnet’s 43(B)log reports on a decision in a case called Trott’s Woodproducts, Inc. v. American Cabinet Doors & More, Inc., 2007 WL 625920 (W.D. Ark.):

Consumer sophistication can stave off confusion. Here’s the unusual case where consumer ignorance prevents infringement, because consumers don’t recognize the existence of a mark.

Plaintiff … sued defendants for false advertising, state unfair competition, false designation of origin, and deceptive trade practices, all stemming from defendants’ alleged practice of using photos of Diamond Doors sample cabinet doors in sales brochures. … Defendants argue that the pictures are simply pictures of generic types and styles of cabinet doors used throughout the industry.

The court rejected plaintiff’s application for a preliminary injunction, finding that consumers were unlikely to recognize the doors, or the photos, as plaintiff’s trademarks, because it would require extreme sophistication to recognize who made a cabinet just by looking at it. …

The court may have gotten caught up in trademark and overlooked the basic passing off that was allegedly taking place – even if no trademark exists in the configuration of the doors, the representation that these doors represent defendants’ work could be false and misleading, whereas photos of defendant’s exact copies of the doors would be perfectly legitimate. That’s the difference between trademark protection for the doors and general unfair competition protection against passing off

I don’t agree with Rebecca, and here’s why. Perhaps I don’t know what actionable “basic passing off” is other than trademark infringement. But if consumers don’t recognize the doors as being a trademark — which sounds pretty unlikely considering they’re the products themselves, and product configuration can’t typically act as a trademark under the “functionality” rule of TrafFix (and see here for a good read on functionality and registrability) — then there is no secondary meaning, and hence no trademark. If there’s no trademark, what is being “passed off”? Indeed, if the doors were visually identical, as Rebecca suggests, in what sense were the visual depictions “false and misleading”? It sounds as if they were true and accurate.

This sounds like a copyright case that probably went awry because the copyright in the photos of the doors had not been registered — a jurisdictional requirement for an action in copyright infringement as well as statutory damages and attorneys’ fees. And because copyright preempts almost all related state law claims, the patently (so to speak) unfair practice of using a competitor’s own photos to compete against him under, say, a cause of action sounding in misappropriation was also not available. But the last thing we want to see is the use of the Lanham Act as a catch-all for just-plain-wrong-doing stuff. So unless Rebecca is onto something I’ve missed — a distinct possibility — I have to go with the judge on this one.

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Author:Ron Coleman

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