THE PROTECTION OF “TRADE DRESS”

IVAN HOFFMAN, B.A., J.D.



        The term “trade dress” refers, in very general terms, to the “look and feel” of a product or its packaging.  That product can be a series of books in the instance of publishers or it can be any other product or package.  Whether or not the party claiming protectable rights in such trade dress can prevail on such claim depends on a number of factors used by the courts.  Two cases, one coming out of the Sixth Circuit Court of Appeals and the other from the United States Supreme Court, afford an opportunity to review such factors.

Grey et. al vs. Meijer, Inc.

        In Grey et. al vs. Meijer, Inc. this was the situation: the plaintiff marketed popcorn under the brand “The Popcorn Shoppe” and the bag containing the product had a design incorporated into the bag, which design the plaintiff contended was distinctive and should be protected under theories related to trade dress.  The defendant, which operated retail stores, originally marketed plaintiff’s popcorn in addition to defendant’s own private label brand of popcorn but eventually, plaintiff’s line was discontinued due to poor sales.  Defendant’s private label popcorn packaging was in some respects similar to that of plaintiff’s packaging and thus the issue thus was whether or not the plaintiff had any protectable rights in its “trade dress.”

        The Court stated the general rule regarding protection of trade dress.  It stated in part:

The Lanham Act’s protection of registered trademarks also extends to unregistered trade dress. [citing a case] To recover for trade dress infringement under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), a plaintiff must prove by a preponderance of the evidence: (1) that its trade dress has obtained “secondary meaning” in the marketplace; (2) that the trade dress of the two competing products is confusingly similar; and (3) that the appropriated features of the trade dress are primarily nonfunctional.
        “Secondary meaning” refers to evidence that, upon seeing a name, book series title or in this instance, a packaging, the public has come to believe that the product related to such name, series title or packaging comes from a particular manufacturer (publisher, popcorn maker etc.) and that a similar use by another would create a likelihood of confusion in the minds of the public as to source.

        The Court then focused on the “likelihood of confusion” element and identified a list of 8 factors that a court might use to make that determination.  Such factors are not conclusive nor exhaustive but instead are factors that, among other factors, help focus the discussion.  Citing another case, the Court quoted:

The general concept underlying likelihood of confusion is that the public believe that the mark’s owner sponsored or otherwise approved of the use of the trademark.
        The eight factors discussed by the Court are:
1. strength of the plaintiff’s mark;
2. relatedness of the goods;
3. similarity of the marks;
4. evidence of actual confusion;
5. marketing channels used;
6. likely degree of purchaser care;
7. defendant’s intent in selecting the mark; and
8. likelihood of expansion of the product lines.
         The Court discussed the said factors but let me cover the ones that are most significant in view of this article.  The Court stated:
The strength of a mark is a determination of the mark’s distinctiveness and degree of recognition in the marketplace. A mark is strong if it is highly distinctive, i.e., if the public readily accepts it as the hallmark of a particular source; it can become so because it is unique, because it has been the subject of wide and intensive advertisement, or because of a combination of both. The stronger the mark, all else equal, the greater the likelihood of confusion.
Strength of a plaintiff’s trade dress depends upon the interplay of two elements, the uniqueness of the trade dress and the investment in imbuing a trade dress with secondary meaning. Thus, the most mundane packaging may be infused with meaning by advertising and other promotional tools, rendering a strong trade dress. Likewise, particularly unique packaging even without any artificial efforts to establish a secondary meaning for the product may result in a strong trade dress. The combination of these two factors determines the relative strength or weakness of the trade dress.
        Because the plaintiff’s product enjoyed virtually no success in the marketplace, the Court agreed with the lower court that as such, the product and its packaging did not possess such secondary meaning as a result of the marketing efforts of the plaintiff.

        Additionally, since the packaging, in the minds of both courts, was not unique or distinctive, that packaging could not ride the “secondary meaning” bandwagon based on this element even despite its lack of financial success.  Plaintiff had argued that including the term “Chicago Style” in its packaging afforded it uniqueness and because defendant had included that term as well, thus there was the likelihood of confusion in the minds of the public.  However, the Court said that such term was in itself not unique because it was applied to many, many products.

        The Court then analyzed the similarity of the marks including the packaging and found them essentially different even though they had similar elements.

        As to the issues related to the marketing channels, the Court stated:

The marketing channels factor requires a court to consider the similarities or differences between the predominant customers of the parties’ respective goods or services. [citing cases] A court must determine whether the marketing approaches employed by each party resemble each other. Id.; see, e.g., Wynn Oil, 839 F.2d at 1188 (finding national marketing effort of one party inevitably overlapped opponent’s local advertising campaign to some degree, although overlap probably would not increase likelihood of confusion significantly); Little Caesar Enters., Inc. v. Pizza Caesar, Inc., 834 F.2d 568, 572 (6th Cir. 1987) (finding sophisticated and televised advertising campaign by national fast-food chain was “quite different” from far less sophisticated advertising by small, local fast-food business).
        As to the likely degree of purchaser care in selecting the goods, the Court found that purchasers of popcorn, because, among other factors, the price was low, were not likely to exercise the same kind of care as if the price were higher and the goods more complex.  Thus, in such instance, there was a greater likelihood of confusion because of such lessened “care.”  However, the Court found that because the defendant’s private label brand was stocked in a different location in the store than the plaintiff’s brand (indeed, the plaintiff’s brand was given an “end cap” or displayed in the center of the aisle, both premium placements) that such factor was diminished in importance.  Under different facts, this factor might have been more legally significant.

        As to the intent of the defendant in selecting the mark claimed to be confusing, the Court said that the law is that if there are no protectable interests, then the intention to copy is not relevant.  The Court cited McCarthy on Trademarks and Unfair Competition, a well respected legal treatise that says:

The first principle of unfair competition law is that everything that is not protected by an intellectual property right is free to copy. In fact, copying is an essential part of the whole fabric of an economic system of free competition. Thus, the act of “copying,” far from being intrinsically improper, is essential and should be lauded and encouraged, not condemned. There is absolutely nothing legally or morally reprehensible about exact copying of things in the public domain.
        The Court stated further:
Other circuits that have likewise found that a presumption of intent to confuse arises when evidence of copying is presented recognize that if there is no real issue of a likelihood of confusion, evidence of copying is of no import. Id. (citations omitted). “We have recognized that evidence of intentional copying raises a presumption that a second comer intended to create a confusing similarity of appearance and succeeded. But if comparison of the works reveals no fair jury issue concerning likelihood of confusion, then intent to copy, even if found from the proffered evidence, would not establish a Lanham Act violation.”
        The Court thus ruled that there plaintiff had no protectable “trade dress” rights.

Wal Mart Stores, Inc. vs. Samara Brothers, Inc.

        In this case that went to the United States Supreme Court, Samara Brothers manufactured a line of children’s clothing and sued Wal Mart and others, claiming that a similar line manufactured for and sold by the retailer violated various Samara Brothers’ rights including its rights to “trade dress.”

        The Court summarized the basis for the protectability of trade dress.  It stated:

The breadth of the definition of marks registrable under §2, and of the confusion-producing elements recited as actionable by §43(a), has been held to embrace not just word marks, such as “Nike,” and symbol marks, such as Nike’s “swoosh” symbol, but also “trade dress”–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. [citing cases] These courts have assumed, often without discussion, that trade dress constitutes a “symbol” or “device” for purposes of the relevant sections, and we conclude likewise. “Since human beings might use as a ‘symbol’ or ‘device’ almost anything at all that is capable of carrying meaning, this language, read literally, is not restrictive.” [citing a case]  This reading of §2 and §43(a) is buttressed by a recently added subsection of §43(a), §43(a)(3), which refers specifically to “civil action[s] for trade dress infringement under this chapter for trade dress not registered on the principal register.” 15 U.S.C.A. §1125(a)(3) (Oct. 1999 Supp.).
        The Court went on to discuss “distinctiveness” of the mark.  It stated in part:
In evaluating the distinctiveness of a mark under §2 (and therefore, by analogy, under §43(a)), courts have held that a mark can be distinctive in one of two ways. First, a mark is inherently distinctive if “[its] intrinsic nature serves to identify a particular source.” Ibid. In the context of word marks, courts have applied the now-classic test originally formulated by Judge Friendly, in which word marks that are “arbitrary” (“Camel” cigarettes), “fanciful” (“Kodak” film), or “suggestive” (“Tide” laundry detergent) are held to be inherently distinctive. [citing a case] Second, a mark has acquired distinctiveness, even if it is not inherently distinctive, if it has developed secondary meaning, which occurs when, “in the minds of the public, the primary significance of a [mark] is to identify the source of the product rather than the product itself.” [citing a case]
        The Court stated further:
It seems to us that design, like color, is not inherently distinctive.

In the case of product design, as in the case of color, we think consumer predisposition to equate the feature with the source does not exist. Consumers are aware of the reality that, almost invariably, even the most unusual of product designs–such as a cocktail shaker shaped like a penguin–is intended not to identify the source, but to render the product itself more useful or more appealing.


        In other words, the Court found that product design, in order to rise to the level of being protectable as a “trade dress” must have developed a secondary meaning since it is not, in itself, capable of being “inherently distinctive.”

        Recall a similar discussion by the Grey Court when discussing the strength of the mark, as above.

        The Court in Wal Mart then held:

We hold that, in an action for infringement of unregistered trade dress under §43(a) of the Lanham Act, a product’s design is distinctive, and therefore protectible, only upon a showing of secondary meaning.
Conclusion

        As you conceive of and then implement your trademark and related rights including rights to trade dress, you must always be aware of the need to market effectively and to retain evidence of your marketing.  This is how you may develop evidence of “secondary meaning.”  This is, of course only one factor but an important one, as this case indicates.  The more distinctive your choices of mark and product packaging design, the better might be your opportunities to claim protectable rights to the marks and trade dress.

© 2002 Ivan Hoffman.  All Rights Reserved.

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This article is not intended as legal advice.  The specific facts that apply to your matter may make the outcome different than would be anticipated by you.  This article is based on United States law.  You should consult with an attorney familiar with the issues and the laws of your country.  This article does not create any attorney client relationship.

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