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[warrendekker]

In the spirit of the ground rules of this forum (give no specific information), I give the following fictional situation:

An American inventor invents a new type of bongo drum, a great improvement over the bongo drums of the past.  The inventor obtains a patent (in the USA only), and develops a nice business selling bongo drums to happy Beatniks across the nation.  About the time that the patent expired, the inventor also obtained a US trademark, of a silhouette of his bongo drum, which has a unique shape, perhaps in hopes of deterring people from making knock-off bongo drums of his design.  This particular trademark was only obtained in the USA.

A company in Canada begins making a similar bongo drum, including the improvements detailed in the expired patent.  The Canadian bongo drum is not an identical knock-off, but does have the same general shape as the silhouette trademarked in the USA.  They sell their bongo drums over the internet at a price much cheaper than the American original.

American bongo drum enthusiasts see the Canadian website, and begin purchasing the Canadian bongo drum over the internet.  Could there be grounds for action against the Canadian company for trademark infringement?  The drums are made in Canada (where neither the patent nor the trademark were registered), and the web site is hosted in Canada, etc.  

Thanks,

Warren

[JSonnabend]

This has been discussed before.  In a nutshell, trademark registrations don't confer trademark rights, they merely register trademark rights that exist.  If a product configuration is functional, it can't act as a trademark, and the registrant has nothing to protect.  See Traffix Devices, Inc. V. Marketingdisplays, Inc. 532 U.S. 23 (2001) .  So while there may be a registration in the hypothetical, it may be little more than a paper tiger.

- Jeff