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Author: Admin | 2025-04-28
McCarthy, McCarthy on Trademarks and Unfair Competition § 7:69, Westlaw (coverage through Dec. 2021).">125 Two cases demonstrating differing applications of trade dress law to aesthetic properties of drug products are relevant for the recommendation made in Part III. In general, the functionality doctrine allows for the protection of color, for example, if the color is not “essential to the use or purpose of the article” and does not “affect[] the cost or quality of the article.”Trademark Manual of Examining Procedure §1202.02(a) (July 2021).">126 Courts have upheld functionality arguments barring trade dress in some pharmaceutical contexts when patients associate product features with therapeutic care.See, e.g., Shire, 329 F.3d at 350 (“Shire’s product literature, promotional materials, and mailings, which its sales staff distributed to physicians, feature color pictures of the Adderall tablets and sometimes direct patients to examine the tablets to ensure that they have received exactly the drug prescribed. Shire does not advertise its products in general consumer publications, but pictures of Adderall tablets appear in the Physician’s Desk Reference and in certain consumer books.”).">127 In Ives Lab., Inc. v. Darby Drug Co., Ives sued generic manufacturers for utilizing a similar color scheme for varying doses of cyclandelate, a medicine taken mostly by elderly patients with vascular diseases, which Ives sold under the trademark Cyclospasmol.Ives, 488 F. Supp. at 396.">128 A functionality defense was successful after first being reversed, and then subsequently upheld after multiple appeals.129 Ives manufactured cyclandelate, marketing it as Cyclospasmol in 200mg doses contained in pale blue capsules imprinted with “Ives 4124,” and 400mg doses in red and blue capsules imprinted with “Ives 4148.” The generic manufacturers purchased bulk cyclandelate powder and colored capsules to assemble their products in the same color-coded dosage scheme. The court held that the capsule colors were functional and that “secondary meaning” of the colors as a means of identifying source, rather than chemical ingredient, function, or dose, was not shown.Ives, 488 F. Supp. at 398.">130 The court finds that the colors are functional in several respects. First, many elderly patients associate the appearance of their medication with its therapeutic effect. There was testimony that some patients refuse to take equivalent drugs of a different color despite explanation of the equivalence by their doctors. Other patients eventually accept equivalent drugs of a different appearance if their physician assuresthem that the prescription was filled correctly but are caused considerable anxiety and confusion by the
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