Turns Out You Can't Trademark A Circle Towel

from the moving-on... dept

Reader don cox alerts us to an appeals court ruling that tosses out a trademark on a circular towel. The backstory is a bit involved and actually involves actor Woody Harrelson and filmmaker Bobby Farrelly of the Farrelly Brothers, but the key point is that this guy, Clemens Franek, started selling round beach towels, and received a trademark from the USPTO for “configuration of a round beach towel.” As the court amusingly notes, Franek came up with this idea the same year as Huey Lewis had the hit song Hip to be Square. However, many years later, Franek saw that Target and Walmart will selling round beach towels made by another company, Jay Franco & Sons, and sued the two retailers. Jay Franco, in response, sued to get Franek’s trademark tossed out. The lower court ditched the trademark and now the appeals court agreed. You can see the decision here:

The main problem? Trademarks are only supposed to apply to non-functional designs. Things like logo or a slogan don’t serve any direct purpose on the product. Unfortunately, a circular beach towel serves a purpose, and much of Franek’s advertising focused on the functional benefits of a round towel (something about moving with the sun). Basically, they suggest he could have tried to secure a design patent on this, but not a trademark, because that would limit anyone’s ability to improve upon the round towel:

To put things another way, a trademark holder cannot block innovation by appropriating designs that undergird further improvements. Patent holders can do this, but a patent’s life is short; trademarks can last forever, so granting trademark holders this power could permanently stifle product development. If we found Franek’s trademark nonfunctional, then inventors seeking to build an improved round beach towel would be out of luck. They’d have to license Franek’s mark or quell their inventiveness. That result does not jibe with the purposes of patent or trademark law.

Furthermore, the court points out that the practical reality here is that he was trying to limit the use of such a basic design element as a circle:

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

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Comments on “Turns Out You Can't Trademark A Circle Towel”

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jilocasin (profile) says:

Say what???

Um, did they really say;
“Basically, they suggest he could have tried to secure a design patent [emphasis mine] on this…”

So apparently someone out there thinks that round, square, circle is innovative enough to deserve a patent?

Uggg….. The sooner we abolish patents and get back to actually doing things the better off we’ll be.

Mike Masnick (profile) says:

Re: Re: Re: Say what???

So what’s the point of a design patent? How does patenting the non-utility aspects of something promote progress or improve anything?

Design patents are really quite similar to trademarks. The idea isn’t to promote progress, but to stop someone else from offering an identical product, such that they might be fooled into believing it came from you.

jilocasin (profile) says:

Re: Re: Re:2 Um....... O.K.

That almost seems like a good idea…… nah who am I kidding, that’s a terrible idea.

If company A invents, and I use the word very loosely, a round towel and company B says “WoW what an incredible idea” and starts selling round towels as well, company A can use a design patent to get the courts to shut them down?

What if Company B put their round towels in a package that wasn’t anything like Company A’s would they still be in trouble? What about if they marketed it as “Our towels aren’t anything like those round towels from Company A, our are rounder”.

Aren’t there already laws against counterfeiting that could be used to prevent one company from passing off their products as being authentic another company products? Why would any design need to be protected?

Damian Byrne (profile) says:

“That result does not jibe with the purposes of patent or trademark law. “

So here they are doing what the law and purposes of patent/trademark says. Seeing if the result they come up with jives with the intended purpose of the law.
Now imagine if this had been a copyright issue. Would they have actually thought of the purpose of copyright law? To promote the creation of new works?

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