Intellectual Property #1
Case:
Gateway, Inc. vs. Companion Products, Inc. 384 Fb 3d 503 (8TH
CIRCUIT, 2004)
Facts:
Gateway, Inc. registered their trademark in 1992 which associated the
black-and-white cow-spots design with their computers and computer
components. Companion products, Inc. (CPI) sells stu.ed animals
trademarked as Stretch Pets, these stu.ed animals have an elastic
body that can wrap around the edges of computer monitors, computer
cases, and televisions. In 1999 CPI started selling a new stretch pet
named “Cody Cow”, this became their top-selling stretch pet and
consisted of black-and-white cow-spots.
Procedural history:
The Federal District Court enjoined CPI from further infringement,
under the Lanham Act on Gateway’s claims for trademark and trade
dress infringement. CPI appeals from the final judgment of the district
court.
Issue:
Does CPI’s 1999 Stretch Pet “Cody Cow” infringe on Gateways trade
dress that was established in 1992?
Reasoning:
The Eighth Circuit agreed with The Federal District Court’s finding
that Gateway’s trade dress had obtained secondary meaning.
oLegal Precedent-Wal-Mart Stores, Inc. vs. Samara Bros.
oGateway’s testimony proved that the general public associates
black-and-white cow spots in relation to Gateway’s computers.
The Eighth Circuit agreed with The Federal District Court that
Gateway’s trade dress was non-functional for two reasons.
1. Legal Precedent- Truck Equipment Service Co. v. Fruehauf
Corp. Black-and-white cow spots “are an arbitrary
embellishment that serve only to distinguish Gateway
computers from computers produced by other
manufacturers”
2. Legal Precedent-Qualitex Co. v. Jacobson Products Co.
Gateway’s decorative design plays “no part whatsoever in
the performance of their computers.”
The Eighth Circuit discredited CPI’s testimony from Mr. Byer’s. They
stated that there was evidence that CPI created the Stretch Pet “Cody
Cow” with Gateway’s computers in mind and had previously tried to
sell it to Gateway for use with Gateway’s products.
The Eighth Circuit agreed with the Federal District Court that there
would be a likelihood of confusion based on four distinct reasons:
oLegal Precedent- WSM, Inc. v. Hilton
1. Gateway spent over $1 billion in the United States alone,
over the past 10 years on advertising and promotional
items.
2. CPI’s “Cody Cow” was manufactured with the same
company Gateway used for its “Gateway plush cow”.
Gateway produced a confusion survey with a 39%
confusion result, that proved people were in belief that
Gateway was aEliated with “Cody Cow” from CPI
3. Legal Precedent- Beer Nuts, Inc. v. Clover Club Foods Co.
CPI sold “Cody Cow” intentionally for use on their
