Courts have long recognized that trademark protection goes beyond words, slogans, and symbols. In recent years, companies have sought to use the broader concept of .trade dress. to protect other distinguishing features of their products, ranging from the color of 3M's Post-It notes to the shape of a Kendall-Jackson wine bottle. While trade dress originally referred exclusively to a product.s packaging, the concept has grown to include product designs for everything from bedroom furniture to sweaters.
But in a unanimous opinion released on March 22, the Supreme Court raised the bar for proving infringement of trade dress, by ruling that design features can never be inherently distinctive. The opinion is likely to send companies scrambling to re-think their intellectual property strategies on a wide range of products.
What.s Distinctive?
The dispute at issue in the Supreme Court involved Samara Brothers, Inc., a designer and manufacturer of children.s clothes, and retail giant Wal-Mart. After Wal-Mart produced and sold a cheaper line of .knock-off. clothes based on photographs of Samara products, Samara sued under the Lanham Act, alleging that the Wal-Mart line infringed on the .unregistered trade dress. of their clothing . in this case, its distinctive design. Samara won the jury trial, and the jury.s decision was affirmed by two lower courts.
But the Supreme Court reversed. While its opinion confirmed that trade dress . indeed, .almost anything at all that is capable of carrying meaning. . may qualify for trademark protection under the Lanham Act, the Court noted that trade dress, like any mark, must be .distinctive. to be protected from copying. .Without distinctiveness,. the Court wrote, .the trade dress would not .cause confusion.as to.origin,. as ' 43(a) [of the Lanham Act] requires..
The Court cited two standards for proving distinctiveness: those marks that are .inherently distinctive. and those that have .acquired. distinctiveness through their .secondary meaning.. In both cases, the distinctiveness must identify the mark as being associated in consumers. minds with a particular source.
A mark may be .inherently distinctive. in one of three ways:
1) The mark may be .arbitrary,. having no relation to the product other than as a means of identifying the company that produces it (.Camel. cigarettes);
2) The mark may be .fanciful,. such as a made-up word (.Kodak. or .Diageo.);
3) The mark may be .suggestive,. providing a link between the characteristics of a particular product and its producer (.Tide. detergent).
Any mark that meets one of these criteria qualifies for trademark protection without any specific proof that consumers associate the mark with the specific source of the product. In any litigation, this is obviously a lower legal burden to meet and involves less time and research expense for the company.
Secondary Meaning
Marks that are not .inherently. distinctive may .acquire. distinctiveness if the mark has built a secondary meaning in the minds of the public. In other words, if a particular type of trade dress has become inextricably linked with its producer, the trade dress qualifies for protection even though it doesn.t meet any of the three standards above. However, proving that a mark has acquired this kind of secondary meaning is likely to be both expensive (involving surveys of consumer attitudes) and legally challenging.
But which elements of trade dress could qualify as inherently distinctive, and which would require the higher burden of secondary meaning?
The Court had already held in an earlier case that color could never be considered inherently distinctive. Instead, a company would have to show that consumers associated the color with the source of the product . such as associating the unique yellow color of Post-It notes with 3M . to receive protection.
In the Wal-Mart case, the Court went further, holding that product design, like color, can never be considered inherently distinctive. Unlike words and symbols, whose primary purpose is to identify the product.s source, .product design.is intended not to identify the source, but to render the product itself more useful or more appealing.. As a result, the Court reversed the lower court rulings and sent the case back to determine whether Samara could prove that its designs had acquired distinctiveness through .secondary meaning. . a daunting threshold for a clothing manufacturer.
Trade Dress vs. Product Packaging
But the Court threaded a fine line between the design of a product and the packaging of a product. Packaging, according to the Court, .normally is taken by the consumer to indicate origin,. and so can be inherently distinctive. In the earlier case, the Court had upheld the distinctiveness of the trade dress of a chain of Mexican restaurants (.a festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings, and murals.). Because the restaurant.s trade dress was akin to product packaging, it could be viewed as inherently distinctive.
As a result, companies are likely to make great efforts to reconfigure their trademarks to fall under the scope of packaging rather than design, in order to avoid the legal necessity of proving secondary meaning. The Court believed that disputes involving packaging versus design would be smaller in number than disputes involving the inherent distinctiveness of design features . but it acknowledged there would be difficult cases .at the margin.. In .close cases,. the Court suggested that lower courts should .err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning..
While the Court.s opinion was not unexpected among trademark professionals, it will significantly add to the branding challenge faced by manufacturers who wish to fend off copycats and knock-offs.