The TTAB's Dangerous Dismissal of 'Doubt'
Charles E. Colman
New York University School of Law; NYU Steinhardt Department of Visual Culture: Costume Studies
November 7, 2013
Harvard Journal of Law and Technology Digest (Nov. 12, 2013)
NYU School of Law, Public Law Research Paper No. 13-75
On September 30, 2013, the Trademark Trial and Appeal Board issued a troubling decision in In re Bottega Veneta Int’l S.a.r.l. Viewed in a broader context, the decision reflects the Board’s growing reluctance to apply the doctrine of “aesthetic functionality” in ex parte prosecution proceedings to bar the issuance of potentially anticompetitive trade-dress registrations. The TTAB gives its imprimatur to the dubious “trade dress” at issue in Bottega Veneta through procedural tactics whose novelty and import have gone largely unacknowledged — specifically, (1) the Board’s declaration of its intention to resolve “doubts” as to aesthetic functionality in favor of applicants, and (2) the Board’s disposal of concerns about product-design monopolization through reliance on supposedly limiting conditions agreed to by the applicant, but which the federal courts will not observe or enforce. As such, In re Bottega Veneta — despite its technical status as a mere “non-precedential” decision by an agency whose determination can theoretically be revisited by the federal courts — will improperly hinder marketplace competition and restrict creative freedom among designers.
For a proposal that the courts and USPTO rely more heavily on the doctrine of “genericism” as a potential solution to the problems associated with the “aesthetic functionality” doctrine, please visit the Law of Fashion website — containing a presentation given at the NYU 2014 Tri-State IP Workshop and forming the basis for a full-length work-in-progress.
Number of Pages in PDF File: 20
Keywords: TTAB, trademark, prosecution, registration, trade dress, patent, design patent, antitrust, anticompetitive, product design, monopoly, Bottega Veneta, aesthetic functionality
Date posted: November 3, 2013 ; Last revised: January 16, 2014
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