Supreme Court Defines Scope of Trade Dress Protection for Product Design
April 11, 2000
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The United States Lanham Act provides protection both for registered trademarks and for unregistered marks, including trade dress. Trade dress encompasses not only a product's packaging, but also its design. For Lanham Act purposes, trade dress may consist of a symbol, color, shape, device or combination of those that identifies an origin, sponsorship or approval of a good. Trade dress may be protectible if an owner can show that the trade dress associated with its goods is distinctive, non-functional, and likely to cause customer confusion. Courts have evaluated the distinctiveness requirement in two ways. Trade dress is distinctive if an owner can show that the trade dress is inherently distinctive or that the trade dress has acquired secondary meaning. A trade dress is inherently distinctive if it is arbitrary (such as "Camel" cigarettes), fanciful (such as "Kodak" film), or suggestive (such as "Tide" laundry detergent). A trade dress has acquired distinctiveness if it has developed secondary meaning, which occurs when the public recognizes that the primary significance of the trade dress is identification of the product's source, not the product itself.
The Supreme Court Case
In Wal-Mart Stores, Inc. v. Samara Brothers, Inc., (March 22, 2000), the United States Supreme Court decided in an unanimous decision written by Justice Antonia Scalia that unregistered trade dress based on a product's design is never inherently distinctive. As a result, to obtain Lanham Act protection, one must show that the trade dress has acquired secondary meaning. In Samara, the trade dress at issue was a line of children's outfits decorated with hearts, flowers, fruits, and the like. Wal-Mart contracted with one of its suppliers to copy 16 of the Samara garments. Samara brought its trade dress infringement suit against Wal-Mart under Section 43(a) of the Lanham Act. A jury found on all counts for Samara. Wal-Mart sought judgment in its favor as a matter of law. Wal-Mart contended that there was insufficient evidence to support a conclusion that Samara's clothing designs could be legally protected as trade dress under the Lanham Act. The district court denied Wal-Mart's motion, the Second Circuit affirmed the judgment for Samara, and the Supreme Court granted review.
Like Color, Product Design Is Not Inherently Distinctive
The Supreme Court held that product design, like color, is not inherently distinctive. The Court reviewed its decision in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 162-62 (1995), where it found that the category of color marks could never be inherently distinctive. The Wal-Mart Court concluded that product design claims should be analyzed like color marks. It reasoned that product design almost invariably serves purposes other than source identification. Additionally, it found that consumers should not be deprived of the benefits of competition with regards to the utilitarian and esthetic purposes that product design ordinarily serves. . . ." The Court discussed the potential for deterrence of competition as a result of the threat of lawsuits if unregistered product designs were permitted on the basis of alleged inherent distinctiveness. It reasoned that a producer could obtain a design patent or a copyright to protect those designs that inherently identify the source of the goods but that have not yet acquired secondary meaning.
The Line Is Drawn: A Product's Packaging Can Be Inherently Distinctive - A Product's Design Cannot.
In drawing the line between product packaging and product design, the Court distinguished its decision in Two Pesos, where it found that trade dress could be inherently distinctive. 505 U.S. at 776. In that case, the Court held a trade dress of a chain of Mexican restaurants could be protected under Section 43(a) of the Lanham Act without a showing of secondary meaning. Id. at 775. The Samara Court distinguished the Two Pesos case by saying that that trade dress was product packaging or something "akin to product packaging." The Court also acknowledged that its decision would force courts to draw lines between trade dress claims based on product design and product packaging.