Copy those festive umbrellas at your peril
A clothing company designs a line of infant seersucker suits with appliqués, then sues Wal-Mart when the retail giant markets its own line of similar-looking garb.
Two Mexican restaurant chains duel it out in the courts when one claims the other stole its festive interior design elements.
![[Image]](images/umbrellas1.jpg)
Lars Smith tries to make sense out of seemingly contradictory court rulings in trademark law.
Welcome to the wild world of “trade dress,” a subcategory of trademark law relating to how the look and design of products and their packaging are—or are not—legally protected.
The U.S. Supreme Court has heard several cases on trade dress disputes in recent years. Each time it seemed to offer differing, sometimes even contradictory, rulings on the concept.
In a recent paper (“Trade Distinctiveness: Solving Scalia’s Tertium Quid Trade Dress Conundrum”) published in the Michigan State Law Review, U of L assistant professor of law Lars Smith tried to reconcile the various interpretations that courts have offered on trade dress protection.
In his paper, Smith adopts a test of “trade distinctiveness” to bring the concept of trade dress more in line with how trademark law protects word marks and logos.
“The essential question is whether you can use trademark law to protect the design of a product,” Smith says. “And the messy answer is: Well, it depends.”
It depends on, among other things, whether a business first used a design and whether consumers associate the design with a particular brand or company.
Under trademark law, word marks such as NIKE and logos like the NIKE swoosh can be protected from the moment of their first use if they are “inherently distinctive,” meaning that consumers automatically understand that the marks identify a product’s source. However, marks or designs that are not inherently distinctive (such as color schemes or, in the case of restaurant interiors, something like a table shape) require more proof that consumers recognize them as unique to that brand in order to have legal protection from copycats. The latter notion is known as “secondary meaning.”
In 1946 the Lanham Act broadened trademark law to include trade dress. Ever since, courts have struggled to interpret those protections while balancing the needs of the marketplace for healthy competition between similar, and often similar-looking, products.
In the 1992 case of the feuding Mexican restaurants (Two Pesos Inc. v. Taco Cabana Inc.), the Supreme Court seemed to issue broad protection under the trade dress concept. Citing the Lanham Act, the court ruled that “secondary meaning,” or consumer understanding of a product’s design distinctiveness, was not necessary to protect a design under trademark law.
However, in the Wal-Mart case (Wal-Mart Stores Inc. v. Samara Bros. Inc.) decided in 2000 (as well as in other decisions), the court backtracked.
In the unanimous decision, Justice Antonin Scalia wrote that while product packaging could be inherently distinctive, product design can be protected only on proof of secondary meaning. In other words, the package something comes in may be protected, but not necessarily the aesthetic design of the product inside the package—from the first sale of product to consumers.
Smith’s paper, in a nutshell, proposes that certain kinds of product designs which are recognized by consumers as belonging to a particular “source” or brand, should be protected upon first use—the same as inherently distinctive logos, slogans, package designs or other protected marks.
The test should be, Smith says, whether the industry has adopted a custom of using certain design features—such as restaurant exteriors, guitar headstocks and automobile hood ornaments and grilles—as identifying a brand.
“If the design features have a source-identifying meaning in the marketplace, then such features have trade distinctiveness and should be automatically protected upon first use in commerce, just as is an inherently distinctive verbal mark,” Smith writes.
He adds, “If not, the trade dress does not have trade distinctiveness, and proof of secondary meaning is required before protection is afforded to the trade dress.”