The United States Supreme Court has granted certiorari to decide when a product's design is "inherently distinctive" so as to be entitled to trade dress protection under the Lanham Act without proof of secondary meaning. Wal-Mart Stores, Inc. v. Samora Bros. Inc. (2nd Cir. No.99-150, 10/4/99).
Trade dress is commonly understood to be the total look of a product and its packaging and even the design and shape of the product itself. Trade dress may include features such as size, shape, color or color combinations, texture, or graphics. Two Pesos, Inc. v. Taco Cabaqa, Inc., 505 U.S. 763, 764 n.1 (1992).
To recover for trade dress infringement under §43(a) of the Lanham Act, a plaintiff must prove two elements: (1)that its trade dress is protectible because (a)it is "inherently distinctive", or (b)it has acquired distinctiveness by achieving a "secondary meaning" in the marketplace, and (2)that there is a likelihood of confusion between its product and the defendant's product. Fun-Damental-Too Ltd. v. Gemmy Indus. Corp., 111 F.3d 993, 999 (2nd Cir. 1997).
A trademark is inherently distinctive if it is arbitrary, fanciful or suggestive. Coach Leatherware Co. v. Ann Taylor, Inc., 933 F.2d 162 (2d Cir. 1991). Marks that are inherently distinctive are regarded as capable of functioning immediately upon use as a symbol of origin. In contrast, secondary meaning is established by use over time such that the ordinary buyer associates the mark with a single source.
Wal-Mart stores appeals from a decision of the Second Circuit affirming that Wal-Mart infringed the trade dress of a line of seersucker children's clothes produced by Samora Brothers. In 1995, Wal-Mart Stores, Inc. contracted with Judy-Phillipine, Inc. ("JIP") to make seersucker garments for sale under Wal-Mart's "Small Steps" label. When JIP made the clothes, it copied 16 Samora garments, 13 of which were covered by registered copyrights. Samora sued Wal-Mart for trade dress infringement under 643 of the Lanham Act and for copyright infringement. A jury found Wal-Mart liable on both claims. The Second Circuit affirmed, finding that the "overall look" of the line of children's clothing consisting of seersucker fabric and bold appliques was protectible under the Lanham Act. 165 F.3d 120 (2nd Cir. 1999). At issue on appeal was whether the garments were "inherently distinctive," since it was acknowledged that the clothes had not acquired secondary meaning in the marketplace.
The Second Circuit found that the distinctive combination of ingredients warranting protection included the typical use of: seersucker fabric; large, bold appliques; large collars with the appliques generally integrated into the collar, and any pockets on the garments; general absence of printed images; black outlines; alphanumeric characters; three-dimensional features or heavy ornamentation (such as bibs or fringe) which are frequently used in children's clothing; and full cut, one-piece conservative bodies." 165 Fed. Cir. at 126.
The Second Circuit's decision in Samora Bros. contrasts to another one of its decision in Knitwaves, Inc. v. Lollytogs, Ltd., 71 F.3d 996 (2d Cir. 1995). The Second Circuit declined to afford trade dress protection to the "fall motif" design on two sweaters manufactured by Knitwaves.
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