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 Robert J. Yarbrough
Patent Attorney

 Patents - Inventions - Trademarks 

Protection of Trade Dress

Robert J. Yarbrough
June, 2001

A.   Origins of “Trade Dress”

 “Trade Dress” is a trademark concept. “Trade dress” consists “not of words or symbols, but of a product’s packaging (or ‘image,’ more broadly).”  Two Pesos v Taco Cabana, infra, J. Thomas concurring.  Trade dress also has been defined as “…a category that originally included only the packaging, or ‘dressing,’ of a product, but in recent years has been expanded by many courts of appeals to encompass the design of a product.”  Wal-Mart Stores v Samara Bros., infra.

The basis of trade dress protection is Section 43(a) of the Lanham Act.  The original Lanham Act as enacted in 1946 prohibited “false description or representation” of a product by a “person who shall with knowledge of the falsity” place the object in commerce.  The 1946 Act did not mention trade dress protection.  The courts extended the protections accorded by Section 43(a) to trade dress, essentially creating a federal law of unfair competition.

Section 43(a) was substantially amended in 1988.  The purpose of the amendments, according to a Senate report (S. Rep. No. 100-515 (1988)), was to make the act consistent with the case decisions.  Amended Section 43(a) appears at 15 USC § 1125(a).  That section provides in relevant part:

 (1)  Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name symbol, or device, or any combination thereofwhich (A) is likely to cause confusion, or to cause mistake, or to deceive… as to the origin… of his or her goods, services, or commercial activities… shall be liable in a civil action….

…(3)  In a civil action for trade dress infringement under this chapter for trade dress not registered on the principal register, the person whoasserts trade dress protection has the burden of proving that the matter sought to be protected is not functional.(Emphasis supplied).

B.   Requirements for Trade Dress

 As developed by the cases and by the 1988 amendments codifying the cases, trade dress entitled to protection under Lanham Act § 43(a) must be distinctive and non-functional.  An infringing trade dress must be likely to cause confusion as to the identity of the provider.

 C.   Two Pesos v Taco Cabana, 112 S.Ct. 2753, 120 L.Ed.2d 615(1992)Taco Cabana logo

 Taco Cabana owned a growing chain of restaurants.  The restaurants featured bright colors, paintings, murals, interior dining, patio areas, overhead garage doors to separate the interior areas from the exterior, stepped exterior of the building, and neon stripes on the building.  Two Pesos was a competing chain that adopted a similar design.  Taco Cabana sued, arguing trade dress infringement.  The district court and Fifth Circuit found the Taco Cabana design to be trade dress and to be infringed by Two Pesos. 

 The Supreme Court affirmed.  The issue before the Court was whether the design of the Taco Cabana restaurants was “distinctive” so as to adequately designate the provider of the goods and services.  Two Pesos argued that the trade dress had not been shown to be “distinctive” because Taco Cabana had not shown “secondary meaning.”   The Court, applying Lanham Act 43(a) as it existed prior to 1988, essentially gave official sanction to the merger of the requirements for trademarks and trade dress. 

 The pre-1988 Section 43(a) included no requirement for distinctiveness of a trade dress.  Nonetheless, the Court recited the five categories of distinctiveness for trademarks listed in Abercrombie & Fitch v Hunting World, 537 F.2d 4 (2nd Cir. 1976).  Those categories are: generic, descriptive, suggestive, arbitrary, and fanciful. 

 The Court noted that “generic” marks (“Park ‘n Fly”) cannot be distinctive and cannot be registered as trademark.  

A “Descriptive” mark is not inherently “distinctive,” but can acquire distinctiveness if the mark has developed “secondary meaning.”  “Secondary meaning” is the association of the mark with the provider of goods or services by the public.  In short, a descriptive mark can become distinctive and can designate a particular provider if the public comes to recognize the descriptive mark as indicating the provider of the good or service.

Marks that are “suggestive” (Tide detergent, Klondike ice cream bars), “arbitrary” (Camel cigarettes), and “fanciful” (Kodak cameras) are inherently distinctive and do not require any showing of “secondary meaning.” 

The Court upheld the conclusion of the district court and court of appeals that the restaurant design in question was inherently distinctive and thus required no showing of secondary meaning.   The Court noted that to require secondary meaning in the case of an inherently distinctive trade dress would penalize persons just starting a business who have not yet developed customer recognition of their mark.

Two Pesos sold out to Taco Cabana in the year following the decision.

 D.   Qualitex v Jacobson Products, 514 U.S. 159 (1995)image of a Qualitex dry cleaning pad

 Qualitex is not a trade dress case; however, trade dress is discussed in resolving arguments by the trademark infringer.   Qualitex sold cleaning pads for dry cleaning establishments.  For many years, its pads were a green-gold color.  A competitor began selling pads of a similar color.  Qualitex registered its color as a trademark and sued for infringement. 

 The Court held that color alone can be registered as a trademark.  In so holding, the Court noted that anything that distinguishes a provider can be registered, including a shape (the Coca Cola bottle), a sound (the NBC chimes), and an odor (a particular fragrance on sewing thread).  The Court saw no reason to preclude color from distinguishing a product.  The Court noted that to be registered, the color must be distinctive and non-functional.  Since there is nothing inherently distinctive about a color, secondary meaning is required to develop distinctiveness based on color.  If the color has a function, including an aesthetic function, then it cannot be registered.  The Court gave the example of competitors of John Deere farm equipment allowed to paint their equipment green despite John Deere’s trademark because farmers want their equipment to match.  Difficult questions of whether two colors are too similar or whether the number of colors available is too limited can be resolved by the courts, which exist to resolve difficult questions.  

 The infringer argued that trade dress protection under Section 43(a) rendered trademark protection based on color alone unnecessary.   The Court provided a list of topics concerning which trademark protection is superior to trade dress protection.  The list includes:  

    a.   § 1124 (ability to block importation of confusingly similar goods).         

     b.   § 1072 (constructive notice of ownership).         

     c.   § 1065 (incontestable status)

d.   § 1057(b) (prima facie evidence of validity and ownership

 E.   Wal-Mart Stores v Samara Bros., 529 U.S. 205, 120 S.Ct. 1339 (2000)image of a Samara Bros dress

Samara produced a line of children’s clothes decorated with appliqués and marketed the clothes in the U.S. through retail department stores.  Wal-Mart sent a series of photographs of Samara products to its overseas supplier with instructions to produce copies.  The supplier did so, and the copies were sold at Wal-Mart stores.  Samara sued Wal-Mart, alleging among other things infringement of unregistered trade dress under Lanham Act §43(a).  Wal-Mart defended by arguing that the clothing designs were not distinctive for the purposes of trade dress protection.  The district court and court of appeals found in favor of Samara.  

 The Supreme Court, in an opinion by Justice Scalia, reversed.  The Court concluded that a product design can be entitled to trade dress protection; however, like the color in Qualitex, a product design is not inherently distinctive and can only acquire distinctiveness through secondary meaning.  If a provider wishes to protect a design prior to the creation of secondary meaning, the provider can obtain a design patent or copyright.  The opinion pulls back from the expansion of trade dress protection provided by Two Pesos, and limits that case to its facts.  The opinion creates a bright distinction between product packaging, which can be inherently distinctive, and product design, which cannot be inherently distinctive.  Said the Court:

To the extent there are close cases, we believe that courts should err on the side of caution and classify ambiguous trade dress a product design, thereby requiring secondary meaning.

As a close case, the Court gives the example of the Coca Cola bottle.  The Court notes that the bottle may be product packaging, which can be inherently distinctive, but also can be part of the product, for a bottle collector or a person who finds it more aesthetically pleasing to drink from the specially-shaped bottle.  Coca Cola’s bottle, therefore, would be classified as product under the Wal-Mart decision and the company would be required to establish secondary meaning to be entitled to trade dress protection.

 F.   Traffix Devices v Marketing Displays, 121 S.Ct 1255 (2001)image of Traffix sign

 Marketing Displays held a patent on a traffic sign with two springs that would not blow over in the wind.  In the claims, the springs were far apart.  During the term of the patent, a competitor introduced a sign where the springs were close together.  Marketing Displays won a resulting patent infringement action under the doctrine of equivalents. 

 Subsequently, Marketing Displays marketed signs with two springs close together.  The patent expired and Traffix introduced a competing sign.  Marketing Displays sued under §43(a) of the Lanham Act, arguing trade dress protection.  Consistent with Wal-Mart, Marketing Displays argued that the product design with two springs had acquired secondary meaning and denoted the origin of the signs to the public. 

 The district court decided that the two-spring design was functional and hence could not qualify for trade dress protection.  The court of appeals reversed, holding that “[e]xclusive use of a feature must ‘put competitors at a significant non-reputation-related disadvantage’ before trade dress protection is denied on functionality grounds.”  The court of appeals reasoned that the two springs of the design easily could be covered or modified, thus any disadvantage to the competitor was not significant.

 The Supreme Court reversed.  The Court noted that a product can be freely copied unless it is protected by law.  The existence of the expired patent creates a strong presumption that the matters addressed by the patent are functional.  The Court stated:

Where the expired patent claimed the feature in questions, one who seeks to establish trade dress protection must carry the heavy burden of showing that the feature is not functional, for instance by showing that it is merely ornamental, incidental, or arbitrary aspect of the device.

The Court corrected the court of appeal’s approach to functionality; namely, that a feature was functional only if denying the feature to competitors placed the competitors at significant disadvantage.  The court of appeal’s position was based on Qualitex, supra, which discussed the effect of aesthetics on functionality.  The Court in Traffix indicated that the question of whether competitors were placed at a disadvantage was relevant to the question of whether a design is aesthetically functional and hence cannot qualify for trademark or trade dress protection.  The Court further defined functionality in the non-aesthetic context as:

[A] feature is also functional when it is essential to the use or purpose of the device or when it affects the cost or quality of the device.