preface introduction and parts i and ii.docx -...

Beebe – Trademark Law: An Open-Source Casebook

Trademark Law: An Open-Source CasebookVersion 6.0 (Summer 2019)

Barton Beebe

John M. Desmarais Professor of Intellectual Property Law

New York University School of Law

This work is licensed under a Creative Commons Attribution-NonCommercial-ShareAlike 4.0 International License.

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I. Establishing Trademark Rights

b. Product Packaging Trade Dress Versus Product Configuration Trade Dress

Between Two Pesos in 1992 and Samara Bros. in 2000, lower courts struggled to establish a workable test by which to determine whether a particular instance of trade dress was inherently distinctive. Courts had particular difficulty establishing a test to determine whether trade dress in the form of product configuration—i.e., in the form of design features of the product itself—was inherently distinctive. As we will see, in Samara Bros. the Supreme Court solved this problem of product configuration rather abruptly.

i. The Differing Distinctiveness Analysis of Product Packaging and Product Configuration

In reading through Samara Bros., consider the following questions:

In Samara Bros., the Supreme Court accepted certiorari on the following question: “What must be shown to establish that a product’s design is inherently distinctive for purposes of Lanham Act trade-dress protection?” Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 528 U.S. 808 (1999). How did the Court answer this question?

Is the court’s holding in Samara Bros. consistent with its holding in Two Pesos?

An example of the apparel at issue in Samara Bros.

Wal-Mart Stores, Inc. v. Samara Bros., Inc.529 U.S. 205 (2000)

Justice SCALIA delivered the opinion of the Court.

[1] In this case, we decide under what circumstances a product’s design is distinctive, and therefore protectible, in an action for infringement of unregistered trade dress under § 43(a) of the Trademark Act of 1946 (Lanham Act), 60 Stat. 441, as amended, 15 U.S.C. § 1125(a).

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I

Respondent Samara Brothers, Inc., designs and manufactures children’s clothing. Its primary product is a line of spring/summer one-piece seersucker outfits decorated with appliques of hearts, flowers, fruits, and the like. A number of chain stores, including JCPenney, sell this line of clothing under contract with Samara.

[2] Petitioner Wal-Mart Stores, Inc., is one of the Nation’s best known retailers, selling among other things children’s clothing. In 1995, Wal-Mart contracted with one of its suppliers, Judy-Philippine, Inc., to manufacture a line of children’s outfits for sale in the 1996 spring/summer season. Wal-Mart sent Judy-Philippine photographs of a number of garments from Samara’s line, on which Judy-Philippine’s garments were to be based; Judy-Philippine duly copied, with only minor modifications, 16 of Samara’s garments, many of which contained copyrighted elements. In 1996, Wal-Mart briskly sold the so-called knockoffs, generating more than $1.15 million in gross profits.

[3] In June 1996, a buyer for JCPenney called a representative at Samara to complain that she had seen Samara garments on sale at Wal-Mart for a lower price than JCPenney was allowed to charge under its contract with Samara. The Samara representative told the buyer that Samara did not supply its clothing to Wal-Mart. Their suspicions aroused, however, Samara officials launched an investigation, which disclosed that Wal-Mart and several other major retailers—Kmart, Caldor, Hills, and Goody’s—were selling the knockoffs of Samara’s outfits produced by Judy-Philippine.

[4] After sending cease-and-desist letters, Samara brought this action in the United States District Court for the Southern District of New York against Wal-Mart, Judy-Philippine, Kmart, Caldor, Hills, and Goody’s for copyright infringement under federal law, consumer fraud and unfair competition under New York law, and—most relevant for our purposes—infringement of unregistered trade dress under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). All of the defendants except Wal-Mart settled before trial.

[5] After a weeklong trial, the jury found in favor of Samara on all of its claims. Wal-Mart then renewed a motion for judgment as a matter of law, claiming, inter alia, that there was insufficient evidence to support a conclusion that Samara’s clothing designs could be legally protected as distinctive trade dress for purposes of § 43(a). The District Court denied the motion, 969 F.Supp. 895 (S.D.N.Y.1997), and awarded Samara damages, interest, costs, and fees totaling almost $1.6 million, together with injunctive relief, see App. to Pet. for Cert. 56-58. The Second Circuit affirmed the denial of the motion for judgment as a matter of law, 165 F.3d 120 (1998), and we granted certiorari, 528 U.S. 808, 120 S.Ct. 308, 145 L.Ed.2d 35 (1999).

II

[6] The Lanham Act provides for the registration of trademarks, which it defines in § 45 to include “any word, name, symbol, or device, or any combination thereof [used or intended to be used] to identify and distinguish [a producer’s] goods . . . from those manufactured or sold by others and to indicate the source of the goods . . . .” 15 U.S.C. § 1127. Registration of a mark under § 2 of the Lanham Act, 15 U.S.C. § 1052, enables the owner to sue an infringer under § 32, 15 U.S.C. § 1114; it also entitles the owner to a presumption that its mark is valid, see § 7(b), 15 U.S.C. § 1057(b), and ordinarily renders the registered mark incontestable after five years of continuous use, see § 15, 15 U.S.C. § 1065. In addition to protecting registered marks, the Lanham Act, in § 43(a), gives a producer a cause of action for the use by any person of “any word, term, name, symbol, or device, or any combination thereof . . .

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which . . . is likely to cause confusion . . . as to the origin, sponsorship, or approval of his or her goods . . . .” 15 U.S.C. § 1125(a). It is the latter provision that is at issue in this case.

[7] 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. See, e.g., Ashley Furniture Industries, Inc. v. Sangiacomo N. A., Ltd., 187 F.3d 363 (C.A.4 1999) (bedroom furniture); Knitwaves, Inc. v. Lollytogs, Ltd., 71 F.3d 996 (C.A.2 1995) (sweaters); Stuart Hall Co., Inc. v. Ampad Corp., 51 F.3d 780 (C.A.8 1995) (notebooks). 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.” Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 162 (1995). 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. § 1125(a)(3) (1994 ed., Supp. V).

[8] The text of § 43(a) provides little guidance as to the circumstances under which unregistered trade dress may be protected. It does require that a producer show that the allegedly infringing feature is not “functional,” see § 43(a)(3), and is likely to cause confusion with the product for which protection is sought, see § 43(a)(1)(A), 15 U.S.C. § 1125(a)(1)(A). Nothing in § 43(a) explicitly requires a producer to show that its trade dress is distinctive, but courts have universally imposed that requirement, since without distinctiveness the trade dress would not “cause confusion . . . as to the origin, sponsorship, or approval of [the] goods,” as the section requires. Distinctiveness is, moreover, an explicit prerequisite for registration of trade dress under § 2, and “the general principles qualifying a mark for registration under § 2 of the Lanham Act are for the most part applicable in determining whether an unregistered mark is entitled to protection under § 43(a).” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992) (citations omitted).

[9] 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. See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 10-11 (C.A.2 1976). 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.” Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851, n. 11 (1982).*

* The phrase “secondary meaning” originally arose in the context of word marks, where it served to distinguish the source-identifying meaning from the ordinary, or “primary,” meaning of the word. “Secondary meaning” has since come to refer to the acquired, source-identifying meaning of a nonword mark as well. It is often a misnomer in that context, since nonword marks ordinarily have no “primary” meaning. Clarity might well be served by using the term “acquired meaning” in both the word-mark and the nonword-mark contexts—but

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[10] The judicial differentiation between marks that are inherently distinctive and those that have developed secondary meaning has solid foundation in the statute itself. Section 2 requires that registration be granted to any trademark “by which the goods of the applicant may be distinguished from the goods of others”—subject to various limited exceptions. 15 U.S.C. § 1052. It also provides, again with limited exceptions, that “nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce”—that is, which is not inherently distinctive but has become so only through secondary meaning. § 2(f), 15 U.S.C. § 1052(f). Nothing in § 2, however, demands the conclusion that every category of mark necessarily includes some marks “by which the goods of the applicant may be distinguished from the goods of others” without secondary meaning—that in every category some marks are inherently distinctive.

[11] Indeed, with respect to at least one category of mark—colors—we have held that no mark can ever be inherently distinctive. See Qualitex, supra, at 162-163,. In Qualitex, petitioner manufactured and sold green-gold dry-cleaning press pads. After respondent began selling pads of a similar color, petitioner brought suit under § 43(a), then added a claim under § 32 after obtaining registration for the color of its pads. We held that a color could be protected as a trademark, but only upon a showing of secondary meaning. Reasoning by analogy to the Abercrombie & Fitch test developed for word marks, we noted that a product’s color is unlike a “fanciful,” “arbitrary,” or “suggestive” mark, since it does not “almost automatically tell a customer that [it] refer[s] to a brand,” 514 U.S., at 162-163, and does not “immediately . . . signal a brand or a product ‘source,’” id., at 163. However, we noted that, “over time, customers may come to treat a particular color on a product or its packaging . . . as signifying a brand.” Ibid. Because a color, like a “descriptive” word mark, could eventually “come to indicate a product’s origin,” we concluded that it could be protected upon a showing of secondary meaning. Ibid.

[12] It seems to us that design, like color, is not inherently distinctive. The attribution of inherent distinctiveness to certain categories of word marks and product packaging derives from the fact that the very purpose of attaching a particular word to a product, or encasing it in a distinctive packaging, is most often to identify the source of the product. Although the words and packaging can serve subsidiary functions—a suggestive word mark (such as “Tide” for laundry detergent), for instance, may invoke positive connotations in the consumer’s mind, and a garish form of packaging (such as Tide’s squat, brightly decorated plastic bottles for its liquid laundry detergent) may attract an otherwise indifferent consumer’s attention on a crowded store shelf—their predominant function remains source identification. Consumers are therefore predisposed to regard those symbols as indication of the producer, which is why such symbols “almost automatically tell a customer that they refer to a brand,” id., at 162-163, and “immediately . . . signal a brand or a product ‘source,’” id., at 163. And where it is not reasonable to assume consumer predisposition to take an affixed word or packaging as indication of source—where, for example, the affixed word is descriptive of the product (“Tasty” bread) or of a geographic origin (“Georgia” peaches)—inherent distinctiveness will not be found. That is why the statute generally excludes, from those word marks that can be registered as inherently distinctive, words that are “merely descriptive” of the goods, § 2(e)(1), 15 U.S.C. § 1052(e)(1), or “primarily geographically descriptive of them,” see § 2(e)(2), 15 U.S.C. § 1052(e)(2). 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

in this opinion we follow what has become the conventional terminology.

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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.

[13] The fact that product design almost invariably serves purposes other than source identification not only renders inherent distinctiveness problematic; it also renders application of an inherent-distinctiveness principle more harmful to other consumer interests. Consumers should not be deprived of the benefits of competition with regard to the utilitarian and esthetic purposes that product design ordinarily serves by a rule of law that facilitates plausible threats of suit against new entrants based upon alleged inherent distinctiveness. How easy it is to mount a plausible suit depends, of course, upon the clarity of the test for inherent distinctiveness, and where product design is concerned we have little confidence that a reasonably clear test can be devised. Respondent and the United States as amicus curiae urge us to adopt for product design relevant portions of the test formulated by the Court of Customs and Patent Appeals for product packaging in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342 (1977). That opinion, in determining the inherent distinctiveness of a product’s packaging, considered, among other things, “whether it was a ‘common’ basic shape or design, whether it was unique or unusual in a particular field, [and] whether it was a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods.” Id., at 1344 (footnotes omitted). Such a test would rarely provide the basis for summary disposition of an anticompetitive strike suit. Indeed, at oral argument, counsel for the United States quite understandably would not give a definitive answer as to whether the test was met in this very case, saying only that “[t]his is a very difficult case for that purpose.” Tr. of Oral Arg. 19.

[14] It is true, of course, that the person seeking to exclude new entrants would have to establish the nonfunctionality of the design feature, see § 43(a)(3), 15 U.S.C. § 1125(a)(3) (1994 ed., Supp. V)—a showing that may involve consideration of its esthetic appeal, see Qualitex, supra, at 170, 115 S.Ct. 1300. Competition is deterred, however, not merely by successful suit but by the plausible threat of successful suit, and given the unlikelihood of inherently source-identifying design, the game of allowing suit based upon alleged inherent distinctiveness seems to us not worth the candle. That is especially so since the producer can ordinarily obtain protection for a design that is inherently source identifying (if any such exists), but that does not yet have secondary meaning, by securing a design patent or a copyright for the design—as, indeed, respondent did for certain elements of the designs in this case. The availability of these other protections greatly reduces any harm to the producer that might ensue from our conclusion that a product design cannot be protected under § 43(a) without a showing of secondary meaning.

[15] Respondent contends that our decision in Two Pesos forecloses a conclusion that product-design trade dress can never be inherently distinctive. In that case, we held that the trade dress of a chain of Mexican restaurants, which the plaintiff described as “a festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals,” 505 U.S., at 765 (internal quotation marks and citation omitted), could be protected under § 43(a) without a showing of secondary meaning, see id., at 776. Two Pesos unquestionably establishes the legal principle that trade dress can be inherently distinctive, see, e.g., id., at 773, 112 S.Ct. 2753, but it does not establish that product-design trade dress can be. Two Pesos is inapposite to our holding here because the trade dress at issue, the decor of a restaurant, seems to us not to constitute product design. It was either product packaging—which, as we have discussed, normally is taken by the

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consumer to indicate origin—or else some tertium quid that is akin to product packaging and has no bearing on the present case.

[16] Respondent replies that this manner of distinguishing Two Pesos will force courts to draw difficult lines between product-design and product-packaging trade dress. There will indeed be some hard cases at the margin: a classic glass Coca-Cola bottle, for instance, may constitute packaging for those consumers who drink the Coke and then discard the bottle, but may constitute the product itself for those consumers who are bottle collectors, or part of the product itself for those consumers who buy Coke in the classic glass bottle, rather than a can, because they think it more stylish to drink from the former. We believe, however, that the frequency and the difficulty of having to distinguish between product design and product packaging will be much less than the frequency and the difficulty of having to decide when a product design is inherently distinctive. To the extent there are close cases, we believe that courts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning. The very closeness will suggest the existence of relatively small utility in adopting an inherent-distinctiveness principle, and relatively great consumer benefit in requiring a demonstration of secondary meaning.

[17] 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. The judgment of the Second Circuit is reversed, and the case is remanded for further proceedings consistent with this opinion.

It is so ordered.

Comments and Questions

1. Assuming product configuration. Does Justice Scalia’s admonition that “courts should err on the side of caution and classify ambiguous trade dress as product design” make sense as a policy matter? What are the costs and benefits of this approach to trademark owners, to their competitors, and to their consumers?

2. What about copyright infringement in Samara Bros.? At the district court, “[t]he jury found that Wal–Mart had wilfully infringed Samara’s rights, awarding Samara $912,856.77 on the copyright claims, $240,458.53 for the Lanham Act violation and $50 for the state law violations.” Samara Bros. v. Wal-Mart Stores, Inc., 165 F.3d 120, 123 (2d Cir. 1998). Decades later, Judge Denny Chin, who was the district court judge in Samara Bros. (and is now on the Second Circuit), reflected on the case:

Ironically, the Supreme Court latched on to a very small part of the case. This was principally a copyright case—the copying of Samara's copyrighted designs. But Samara had included a trade dress claim, and the jury awarded some damages for the trade dress claim, although far less than for the copyright claims. The jury’s award on the copyright claims remained intact, and, ultimately, the Supreme Court's reversal had little practical impact on the case, even as it made new law. Apparently, the Supreme Court saw this case as an opportunity to clarify the law in the trade dress area, and it did so.

Hon. Denny Chin, Litigating Copyright Cases: A View from the Bench: The Forty-First Annual Donald C. Brace Memorial Lecture, 59 J. COPYRIGHT SOC'Y U.S.A. 185, 194–95 (2012).

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ii. Distinguishing Product Packaging from Product Configuration

The Supreme Court’s holding in Samara Bros. eliminated one problem—how to analyze the inherent distinctiveness of product configuration trade dress—but created another—how to determine whether a particular product feature or combination of product features qualifies as product packaging trade dress, product configuration trade dress, or perhaps some other kind of trade dress. The opinion excerpts that follow offer examples of how courts have sought to determine where along the packaging/configuration divide particular forms of trade dress fall. In reading the opinions, consider the following question: How should a court treat various forms of decoration applied to the surface of the product (e.g., stripes on the side of an athletic shoe)? Is such decoration product packaging, production configuration, or something else?

In re Slokevage441 F.3d 957 (Fed. Cir. 2006)

LOURIE, Circuit Judge.

[1] Joanne Slokevage (“Slokevage”) appeals from the decision of the United States Patent and Trademark Office, Trademark Trial and Appeal Board (“Board”) sustaining the refusal of the examiner to register her trade dress mark for clothing. In re Joanne Slokevage, Serial No. 75602873 (TTAB Nov. 10, 2004) (“Final Decision”). Because the Board’s finding that Slokevage’s trade dress was product design and thus could not be inherently distinctive, and that the trade dress was not unitary are supported by substantial evidence, we affirm.

BACKGROUND

[2] Slokevage filed an application to register a mark on the Principal Register for “pants, overalls, shorts, culottes, dresses, skirts.” Slokevage described the mark in her application as a “configuration” that consists of a label with the words “FLASH DARE!” in a V-shaped background, and cut-out areas located on each side of the label. The cut-out areas consist of a hole in a garment and a flap attached to the garment with a closure device. This trade dress configuration, which is located on the rear of various garments, is depicted below:

[3] Although Slokevage currently seeks to register a mark for the overall configuration of her design, she has already received protection for various aspects of the trade dress configuration. For example, she received a design patent for the cut-out area design. She also

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registered on the Supplemental Register1 a design mark for the cut-out area. In addition, she registered the word mark “FLASH DARE!” on the Principal Register.

[4] The trademark examiner initially refused registration of the proposed mark on the ground that it constituted a clothing configuration that is not inherently distinctive. The examiner afforded Slokevage the opportunity to submit evidence of acquired distinctiveness or to disclaim the design elements of the configuration, but Slokevage chose not to submit evidence of acquired distinctiveness or to disclaim the design elements. Rather, she argued that the trade dress was inherently distinctive. The examiner, relying on section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), made final his refusal to register the mark on the ground that the clothing configuration constitutes “product design/configuration,” and pursuant to the decision of the U.S. Supreme Court in Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000), “product design” cannot be inherently distinctive. The examiner noted that Slokevage’s reference in her application to the trade dress as a “cut-away flap design” supported a determination that the configuration constitutes product design . . . .

[5] Slokevage appealed the refusal of the examiner to register the trade dress configuration, and the Board affirmed the examiner’s decision. The Board found that the cut-out areas, consisting of the holes and flaps, constituted product design. Relying on Wal-Mart, the Board observed that a product design “will not be regarded as a source indicator at the time of its introduction.” According to the Board, Slokevage’s trade dress, as product design, could not be inherently distinctive, and therefore could not be registered absent a showing of acquired distinctiveness.

. . . .

DISCUSSION

[6] We apply a limited standard of review to Board decisions, reviewing legal determinations de novo and factual findings for substantial evidence. In re Pacer Tech., 338 F.3d 1348, 1349 (Fed.Cir. 2003). “Substantial evidence requires the reviewing court to ask whether a reasonable person might find that the evidentiary record supports the agency’s conclusion.” On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085 (Fed.Cir. 2000).

[7] As a preliminary matter, Slokevage argues that whether trade dress is product design or not is a legal determination, whereas the government asserts that it is a factual issue. The resolution of that question is an issue of first impression for this court. We conclude that the determination whether trade dress is product design is a factual finding because it is akin to determining whether a trademark is inherently distinctive or whether a mark is descriptive, which are questions of fact. See, e.g., Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357, 1359 (Fed.Cir. 2001) (“The issue of inherent distinctiveness is a factual determination made by the board”); see also In re Nett Designs, Inc., 236 F.3d 1339, 1341 (Fed.Cir. 2001) (“Placement of a term on the fanciful-suggestive-descriptive-generic continuum is a question of fact”). Inherent distinctiveness or descriptiveness involves consumer perception and whether consumers are predisposed towards equating a symbol with a source. See In re MBNA Am. Bank, N.A., 340 F.3d 1328, 1332 (Fed.Cir. 2003); In re Nett Designs, Inc., 236 F.3d at 1341-42. Such issues are determined based on testimony, surveys,

11 Pursuant to section 23 of the Lanham Act, the United States Patent and Trademark Office (“PTO”) maintains a Supplemental Register for marks “capable of distinguishing applicant’s goods or services and not registrable on the principal register.” 15 U.S.C. § 1091(a).

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and other evidence as questions of fact. Determining whether trade dress is product design or product packaging involves a similar inquiry. Wal-Mart, 529 U.S. at 213, 120 S.Ct. 1339 (discussing product packaging and design in the context of consumers ability to equate the product with the source). We therefore will defer to the Board’s finding on product design, affirming the Board if its decision is supported by substantial evidence . . . .

I. Trade Dress and Product Design

[8] On appeal, Slokevage argues that the Board erred in determining that the trade dress2 for which she seeks protection is product design and thus that it cannot be inherently distinctive. She asserts that the Board’s reliance on the Supreme Court’s decision in Wal-Mart to support its position that Slokevage’s trade dress is product design is misplaced. In particular, she contends that Wal-Mart does not provide guidance on how to determine whether trade dress is product design. Moreover, she maintains that the trade dress at issue in Wal-Mart, which was classified as product design without explanation, is different from Slokevage’s trade dress because the Wal-Mart trade dress implicated the overall appearance of the product and was a theme made up of many unique elements. Slokevage argues that her trade dress, in contrast, involves one component of a product design, which can be used with a variety of types of clothing. Slokevage further asserts that her trade dress is located on the rear hips of garments, which is a location that consumers frequently recognize as identifying the source of the garment.

[9] The PTO responds that the Board correctly concluded that Slokevage’s trade dress is product design and that it properly relied on Wal-Mart for support of its determination. According to the PTO, in the Wal-Mart decision the Supreme Court determined that a design of clothing is product design. The PTO further asserts that the trade dress at issue in Wal-Mart, which was classified as product design, is similar to Slokevage’s trade dress. The trade dress in Wal-Mart consists of design elements on a line of garments, and Slokevage’s trade dress similarly consists of a design component common to the overall design of a variety of garments. The PTO notes that Slokevage’s trade dress application refers to her trade dress as a “configuration” including a “clothing feature,” and that “product configuration” is synonymous with “product design.” The PTO also argues that under Wal-Mart product design cannot be inherently distinctive, the rationale being that consumers perceive product design as making the product more useful or desirable, rather than indicating source. According to the PTO, the trade dress at issue here makes the product more desirable to consumers, rather than indicates source. Finally, the PTO notes that even if it were a close case as to whether Slokevage’s trade dress constitutes product design, the Court’s opinion in Wal-Mart states that in “close cases,” trade dress should be categorized as product design, thereby requiring proof of acquired distinctiveness for protection. 529 U.S. at 215.

[10] We agree with the Board that Slokevage’s trade dress constitutes product design and therefore cannot be inherently distinctive. The Lanham Act provides protection not only for words and symbols, but also for “trade dress,” a category of trademarks that has been described as involving the “total image of a product,” including “features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n. 1 (1992). The Supreme Court has recently observed that trade dress is a category that originally included only the packaging of a

22 Slokevage admits that the configuration she is seeking to protect is “trade dress” and thus we will accept for purposes of this appeal that the configuration is “trade dress.”

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product, but has been expanded by courts to encompass the design of a product. Wal-Mart, 529 U.S. at 209. In order for an applicant to gain protection for trade dress, the trade dress must be distinctive, either inherently or by acquiring distinctiveness. Two-Pesos, 505 U.S. at 769, 112 S.Ct. 2753. Trade dress is inherently distinctive when its “intrinsic nature serves to identify a particular source of a product,” and, in contrast, acquires distinctiveness when the public comes to associate the product with its source. Id. at 768-769. The Supreme Court has determined that certain types of trade dress, in particular, product design and color, can never be inherently distinctive. See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162 (1995) (color can never be inherently distinctive); Wal-Mart, 529 U.S. at 212 (product design is not inherently distinctive).

[11] Directly relevant to our discussion of product design is the Court’s discussion in Wal-Mart. That case addressed whether product design could ever be inherently distinctive and answered the question in the negative. The trade dress in Wal-Mart involved children’s clothing decorated with “hearts, flowers, fruits, and the like.” 529 U.S. at 207. The Court labeled that trade dress product design and ultimately concluded that product design is entitled to protection only if it has acquired distinctiveness. Id. at 216. The Court reasoned that “in the case of product design . . . we think consumer predisposition to equate the feature with the source does not exist” and stated that “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.” Id. at 213. Thus, the Court established a bright-line rule—product design cannot be inherently distinctive, and always requires proof of acquired distinctiveness to be protected. The Court did not recite the factors that distinguish between product packaging and product design trade dress, but stated that in “close cases” courts should classify the trade dress as product design. Id. at 215.

[12] Both parties agree that if we determine that the trade dress at issue is product design, then it cannot be inherently distinctive under the decision in Wal-Mart. The issue pertinent to this appeal, however, is whether Slokevage’s proposed trade dress is product design. Although the decision in Wal-Mart does not expressly address the issue of what constitutes product design, it is informative to this case because it provides examples of trade dress that are product design. The Court observed that a “cocktail shaker shaped like a penguin” is product design and that the trade dress at issue in that case, “a line of spring/summer one-piece seersucker outfits decorated with appliques of hearts, flowers, fruits, and the like” is product design. Wal-Mart, 529 U.S. at 207. These examples demonstrate that product design can consist of design features incorporated into a product. Slokevage urges that her trade dress is not product design because it does not alter the entire product but is more akin to a label being placed on a garment. We do not agree. The holes and flaps portion are part of the design of the clothing—the cut-out area is not merely a design placed on top of a garment, but is a design incorporated into the garment itself. Moreover, while Slokevage urges that product design trade dress must implicate the entire product, we do not find support for that proposition. Just as the product design in Wal-Mart consisted of certain design features featured on clothing, Slokevage’s trade dress similarly consists of design features, holes and flaps, featured in clothing, revealing the similarity between the two types of design.

[13] In addition, the reasoning behind the Supreme Court’s determination that product design cannot be inherently distinctive is also instructive to our case. The Court reasoned that, unlike a trademark whose “predominant function” remains source identification,

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product design often serves other functions, such as rendering the “product itself more useful or more appealing.” Wal-Mart, 529 U.S. at 212, 213. The design at issue here can serve such utilitarian and aesthetic functions. For example, consumers may purchase Slokevage’s clothing for the utilitarian purpose of wearing a garment or because they find the appearance of the garment particularly desirable. Consistent with the Supreme Court’s analysis in Wal-Mart, in such cases when the purchase implicates a utilitarian or aesthetic purpose, rather than a source-identifying function, it is appropriate to require proof of acquired distinctiveness.

[14] Finally, the Court in Wal-Mart provided guidance on how to address trade dress cases that may be difficult to classify: “To the extent that there are close cases, we believe that courts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning.” 529 U.S. at 215. Even if this were a close case, therefore, we must follow that precedent and classify the trade dress as product design. We thus agree with the Board that Slokevage’s trade dress is product design and therefore that she must prove acquired distinctiveness in order for her trade dress mark to be registered.

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LVL XIII Brands, Inc. v. Louis Vuitton Malletier S.A.209 F. Supp. 3d 612, 626 (S.D.N.Y. 2016)

In LVL XIII Brands, the plaintiff produced “‘luxury’ men’s sneakers” featuring “a rectangular metal toe plate with a ‘LVL XIII inscription’ secured to the front outsole of the sneaker by metal screws.” Id. at 628. (See the above image on the left). The defendant produced luxury sneakers also featuring a metal toe plate (above, right). The parties filed cross-motions for summary judgment. The district court analyzed whether the plaintiff’s toe plate design was product packaging or product configuration:

This is not a close case. Even a cursory examination of the TP {metal toe plate} discloses that it does not qualify as a trademark or product packaging. . . . [P]roduct packaging is generally limited to “the appearance of labels, wrappers, boxes, envelopes, and other containers used in packaging a product as well as displays and other materials used in presenting the product to prospective purchasers.” Restatement (Third) of Unfair Competition § 16 cmt.a (1995).

0 http://www.thefashionlaw.com/home/louis-vuitton-lvl-xiii-head-back-to-court-over-sneaker-top-plates?rq=LVL%20XIII.

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Tellingly, LVL XIII has not offered any admissible evidence to support its claim that the TP falls within either of these categories. And the record evidence is decidedly to the contrary.

First, the “packag[ing]” described in LVL XIII’s business plan consists solely of “distinctive branded shoe boxes” and “black cotton dust bags”—it does not include the TP.

Second, in declining to register {LVL XIII’s trademark} Application, the PTO stated that “the rectangular shape of the shoe toe plate . . . is a configuration of a feature of the shoe design,” which “can never be inherently distinctive as a matter of law.” Although the PTO’s determination is not dispositive, the Court is to “accord weight” to it. Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 148 n. 11 (2d Cir. 1997). Such deference is particularly appropriate where, as here, the PTO’s determination is consistent with the registrant’s own characterization of the claimed mark: As noted, the ‘102 Application sought registration for a “shoe toe design” (emphasis added); see In re Slokevage, 441 F.3d at 959 (“Slokevage’s reference in her application to the trade dress as a ‘cut-away flap design’ supported a determination that the configuration constitutes product design.”). And LVL XIII used dotted lines to identify unclaimed portions of the mark, a procedure required only for “trade dress marks.” See U.S. Patent & Trademark Office, Trademark Manual of Examining Procedures (“TMEP”) § 1202.02(c)(i) (Apr. 2016 ed.).

Despite this evidence, LVL XIII argues that the TP is an inherently distinctive trademark because its uniform size and placement on LVL XIII’s line of sneakers renders it “arbitrary” and “fanciful,” and thus apt to be an automatic indicator of source. That argument is not persuasive. . . . Despite LVL XIII’s efforts to shoehorn the TP into the trademark category, it does not fit. Rather, like the configuration in Slokevage, the TP serves a primarily aesthetic function: making LVL XIII’s sneakers appear more enticing. Accordingly, the TP can be classified only as a product design feature which is not inherently distinctive. To prevail on its Lanham Act claims, LVL XIII must therefore show that the TP acquired secondary meaning.

LVL XIII Brands, Inc. v. Louis Vuitton Malletier S.A., 209 F. Supp. 3d 612, 652–54 (S.D.N.Y. 2016) (footnotes and some citations omitted). The Second Circuit subsequently affirmed. LVL XIII Brands, Inc. v. Louis Vuitton Malletier SA, 720 F. App’x 24 (2d Cir. 2017).

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McKernan v. Burek118 F. Supp. 2d 119 (D.Mass. 2000)

In McKernan, the plaintiff McKernan sold a novelty bumper sticker that purported to be a “Cape Cod Canal Tunnel Permit.” (This was meant to be hilarious. There is no tunnel to Cape Cod.) He brought a trademark infringement suit against Burek and others who were producing similar bumper stickers. McKernan conceded that his bumper sticker design had no secondary meaning. The parties filed cross-motions for summary judgment. Judge Lasker analyzed whether the bumper sticker was product packaging or product configuration as follows:

The Tunnel Permit presents one of the “hard cases at the margin” referred to by the Supreme Court {in Wal-Mart}. It is particularly difficult to try to distinguish between the packaging and the product when discussing an ornamental bumper sticker. The packaging and the product are so intertwined that distinguishing between them may be regarded as a scholastic endeavor.

Nevertheless, the Supreme Court’s opinion in Wal–Mart provides some guidance. The example given in Wal–Mart, of the classic Coca–Cola bottle is instructive: an item is the product if it is the essential commodity being purchased and consumed rather than the dress which presents the product.

Here, the essential commodity being purchased is a joke on a bumper sticker. All of the visual elements contained in the Tunnel Permit are a part of this joke and indispensable to it. What is being purchased and consumed is the novelty sticker, not dress identifying the prestige or standing of its source. Because McKernan is seeking protection for the product being consumed, the proper classification of what McKernan seeks to protect is product design. This view of the matter is strengthened by the Wal–Mart Court’s remarkably clear advice that in close cases trial courts should “err on the side of caution and classify ambiguous trade dress as product design.” Wal–Mart, 529 U.S. at 215.

Accordingly, because McKernan seeks to protect his product design which, by definition, cannot be “inherently distinctive,” his claim under § 43(a) fails.

118 F. Supp. 2d at 123-24. (McKernan did not bring a copyright claim, apparently because he falsely represented to the Copyright Office that he had drawn the image of Cape Cod appearing on the sticker when in fact he had copied it from a book. Id. at 122.).

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0

Best Cellars, Inc. v. Wine Made Simple, Inc.320 F.Supp.2d 60, 69-70 (S.D.N.Y. 2003)

In Best Cellars, the plaintiff, a wine retailer based in New York City, broadly claimed as its trade dress

the total effect of the interior design of its store, which it describes as: (1) eight words differentiating taste categories; (2) eight colors differentiating taste categories; (3) eight computer manipulated images differentiating taste categories; (4) taste categories set above display fixtures by order of weight; (5) single display bottles set on stainless-steel wire pedestals; (6) square 4”x4” cards with verbal descriptions of each wine (“shelf talkers”) with text arranged by template; (7) shelf talkers positioned at eye level, below each display bottle; (8) bottles vertically aligned in rows of nine; (9) storage cabinets located beneath vertically aligned bottled; (10) materials palette consisting of light wood and stainless steel; (11) mixture of vertical racks and open shelving display fixtures; (12) no fixed aisles; (13) bottles down and back-lit; and (14) limited selection (approximately 100) of relatively inexpensive wine.

Id. at 70.

Judge Lynch briefly analyzed whether this constituted product packaging trade dress or product configuration trade dress as follows:

Unlike more traditional trade dress cases that concern product packaging (like water bottles, see Nora Beverages, Inc. v. Perrier Group of America, Inc., 269 F.3d 114 (2d Cir. 2001)) or product designs (like children’s clothing, see Samara Bros., 529 U.S. at 213), this case concerns the interior decor of a retail establishment where customers purchase other products. In this, the case is similar to Two Pesos, which concerned the interior decor of Mexican-themed restaurants. See Two Pesos, 505 U.S. at 764–65 n. 1 (noting that trade dress “may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques” (citations and internal quotation marks omitted)). As the Supreme Court explained, the interior decor category

0 From Rockwell Group, http://www.rockwellgroup.com/projects/entry/best-cellars.

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fits awkwardly into the classifications of trade dress law, constituting either product packaging or a “tertium quid” akin to product packaging. Samara Bros., 529 U.S. at 215. Interior decor is thus clearly not product design. Accordingly, it is appropriate to analyze the Best Cellars’ interior decor trade dress under the product packaging standard for inherent distinctiveness . . . .

Id. at 69-70.

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Fedders Corp. v. Elite Classics268 F. Supp. 2d 1051 (S.D. Ill. 2003)

In Fedders, the plaintiff, a manufacturer of single room air conditioners claimed as its trade dress the “undulating curve on the left or right of the faceplate separating the portion of the faceplate on which the controls are positioned from the air intake louvers.” Judge Gilbert analyzed the question of product packaging / product configuration as follows:

In this case, the key question is whether the subject trade dress—the undulating curve on the decorative front—is part of the product design or packaging. The defendants argue that the curve is part of the product design, and that, therefore, evidence of secondary meaning is required. On the other hand, Fedders notes that the curve is not functional, but rather, purely esthetic. Moreover, Fedders argues that the curve is a unique design that is associated with its Chassis line of air conditioners. Therefore, according to Fedders, the curve is “inherently distinctive,” and no evidence of secondary meaning is necessary . . . .

In this case, the Court believes that Fedders’s undulating curve is not “packaging”, but rather product design. The curve serves a purpose other than to identify the maker. It serves the purpose of making the air conditioners more esthetically appealing.

Id. at 1061-62.

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In re SnoWizard, Inc.129 U.S.P.Q.2d 1001 (TTAB 2018)

The applicant sought to register the mark shown below for goods it identified as consisting of a “Concession trailer for snowball vendors to operate a viable snowball business.” Id. at 1001. The applicant described that mark as follows: “The mark consists of a three-dimensional configuration of a snowcapped roof with the word "SNOBALLS", a snowball and associated beverage container positioned on top of a concession trailer for snowball vendors. The matter shown in broken or dotted lines is not part of the mark and serves only to show the position or placement of the mark.” Id. at 1001-02.

The applicant presented the photograph shown below as its specimen of use:

The TTAB found: “Clearly, the product at issue in this case is the concession trailer; that is the product offered for sale, purchased by, and used by snowball vendors. It is not a container for flavored shaved ice or snowballs sold to consumers, as suggested by Applicant. Accordingly, Applicant's applied-for mark is properly characterized as a product design. Specifically, it is the design of the roof of a concession trailer. It therefore requires a showing of acquired distinctiveness in order to be registered on the Principal Register.” Id. at 1003. (Reviewing, among other things, voluminous photographic evidence of similar concession trailers, the TTAB went on to find no secondary meaning. See id. at 1004-08)

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In re Frankish Enterprises Ltd.113 U.S.P.Q.2d 1964 (TTAB 2015)

In In Re Frankish Enterprises Ltd., the applicant sought to register the above-pictured three-dimensional mark for “[e]ntertainment services, namely, performing and competing in motor sports events in the nature of monster truck exhibitions.” The applicant described the mark as follows: “The mark consists of a truck cab body in the design of a fanciful, prehistoric animal. The matter shown by dotted lines is not part of the mark, but serves only to show the position of the mark.” The TTAB concluded that the mark was capable of inherent distinctiveness:

Applicant does not seek registration of its design for a product, it seeks registration of its “fanciful, prehistoric animal” design for its monster truck exhibition services, and under Two Pesos, trade dress for services may be inherently distinctive. Indeed, Applicant’s service is exhibiting its monster truck in action, such as doing wheelies, jumping over and crushing smaller vehicles and otherwise entertaining fans with the truck's size, power and sheer awesomeness, which could be performed with or without the “fanciful, prehistoric animal” design on the outside of the truck, just as Taco Cabana's service of offering Mexican food to restaurant customers could be performed without the particular interior design found to be inherently distinctive in Two Pesos. {T}he “fanciful, prehistoric animal” design is akin to the packaging of what is being sold, in this case Applicant's monster truck services.

In Re Frankish Enterprises Ltd., 113 U.S.P.Q.2d 1964, 2015 WL 1227728, at *4 (TTAB 2015). (For the Board’s determination of whether in fact the mark was inherently distinctive, see below in Part I.A.2.c).

Comments and Questions

1. Is the three stripes design for the surface of athletic shoes shown in the registration below product configuration, product packaging, or some “tertium quid”? (The dotted lines do not constitute part of the claimed mark. The registration includes them only to show placement of the mark).

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