Protection Of Product Configurations: Supreme Court To Review Samara Brothers

by R. Charles Henn Jr.*

I. Introduction

On October 4, 1999, the Supreme Court granted certiorari to hear an appeal from the much-ballyhooed Second Circuit decision in Samara Brothers, Inc. v. Wal-Mart Stores, Inc.,(1) opening the door for the Court to establish (or clarify) the appropriate test for inherent distinctiveness in a claim of trade dress infringement. What remains to be seen, of course, is what course the Court will take.

This article briefly discusses the general requirements for protection of product configurations as trade dress. Next, the article examines the principal tests used by courts to evaluate claims of inherent distinctiveness. Finally, the article presents the Second Circuit opinion within this context, with an eye toward the pending appeal.

II. Protectability of Product Configurations

A product configuration is protectable as "trade dress" when it functions as a trademark, i.e., when the configuration serves to identify the source of the product. The owner of a certain product configuration must satisfy three prerequisites to establish that it is protectable as trade dress.

First, a configuration is eligible for protection only when it is actually used in commerce in a manner that is apparent to consumers. Second, the trade dress must be nonfunctional. In other words, for a product configuration to function as a trademark, it must not be essential to the use or purpose of the product and it must not affect the quality of the product.(2)

Finally, prospective purchasers must perceive the product configuration as a symbol identifying the source of the product with which it is associated.(3) In most cases, the owner of the trade dress may satisfy this "distinctiveness" requirement by demonstrating that the configuration has achieved secondary meaning — that the configuration has, through a period of use, come to be seen as such a source-identifying symbol.

To bring a claim for trade dress infringement under the dilution provisions of the Lanham Act,(4) however, the plaintiff must demonstrate substantially more distinctiveness. The First Circuit explained: "[T]he mere acquisition of secondary meaning to achieve trademark status in a non-inherently distinctive designation is nowhere near sufficient to achieve the status of `famous mark' under the anti-dilution statute. The acquisition of secondary meaning merely establishes the minimum threshold necessary for trademark status: section 43(c) requires a great deal more."(5)

III. Inherent Distinctiveness

Because the standard for proving secondary meaning is somewhat difficult to satisfy, and because many owners of product configurations seek protection under the dilution statute, proving "inherent distinctiveness" has become virtually essential in many trade dress cases.

In Two Pesos, Inc. v. Taco Cabano, Inc.,(6) the Supreme Court established that product configurations can qualify for trade dress protection if they are inherently distinctive. Since 1992, however, the Court has not established guidelines for determining which product configurations are inherently distinctive,(7) leading to confusion among the Circuit courts.

While courts have adopted various tests and standards for evaluating claims of inherent distinctiveness, three principal lines of analysis have evolved in the lower courts. One method for determining inherent distinctiveness, followed in varying degrees by courts in the Fifth and Eighth circuits, applies the "Abercrombie"(8) continuum to the product configuration (classifying trade dress, like word marks, as fanciful, arbitrary, suggestive, descriptive, or generic).(9)

Three circuits tend to follow the approach first established in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd.(10) According to this "Seabrook" test, courts in the First, Eleventh, and Federal circuits apply the following four factors to determine whether a product configuration is inherently distinctive:(11)

1) Whether the product configuration is a "common" or basic design; 2) Whether the configuration is unique or unusual within the class of goods; 3) Whether the configuration is 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"; and 4) Whether the configuration is capable of creating a distinctive impression independent of the associated product.(12)

The Third Circuit follows a three-pronged test in evaluating claims of inherent distinctiveness. A product configuration must be: 1) "unusual and memorable"; 2) "conceptually separable from the product"; and 3) "likely to serve primarily as a designator of origin of the product."(13)

IV. The Second Circuit "Test" in Samara Brothers v. Wal-Mart

Since Two Pesos, courts in the Second Circuit followed an inconsistent set of guidelines in trade dress cases. In at least one case, the Second Circuit applied the Ambercrombie test.(14) In another instance, however, it rejected the use of the "descriptive" label in the context of product configurations.(15) Moreover, the Southern District of New York has twice applied the four-factored Seabrook test.(16)

In Samara Bros., Inc. v. Wal-Mart Stores, Inc.,(17) the Second Circuit did not follow any of these formulae in concluding that the product configuration at issue was inherently distinctive, thus maintaining its "the best test is no test" approach to trade dress cases.

Samara offers a line of seersucker children's clothing (jumpers generally) that have cloth appliques stitched across the chest and neckline. A jury found that Wal-Mart had infringed Samara's copyrights in thirteen patterns as well as the "inherently distinctive" trade dress of the jumpers. The appeal arose after the district court denied Wal-Mart's motion for judgment N.O.V., writing an opinion addressing the trade dress issue, which the court characterized as the most difficult.(18) Because Samara did not claim that the jumpers had acquired secondary meaning, the issue on appeal was whether there was sufficient evidence before the jury to establish that the product configuration was inherently distinctive.(19)

The Second Circuit neither classified the configuration as "suggestive" nor applied any discernible "factors" or "tests" in evaluating the evidence of inherent distinctiveness. Rather, the court pointed to the testimony of Samara's Vice-President for sales that "Samara chose to design its line of spring/summer seersucker children's clothes using consistent design elements so that the look would be identified with Samara, building brand loyalty" and that the product configuration was "the core of Samara's business" and the "lifeblood of the company."(20) In essence, the court held that the product configuration was inherently distinctive because the company intended it to be so.

Relying on the plaintiff's intent will permit clever designers to generate inherent distinctiveness by fiat merely by testifying that he or she intended for the configuration to serve as a source-identifying characteristic of the product. And, while this would certainly reduce the court's discretion in the analysis, and another opportunity for activism, such a test hardly preserves the policy foundation of trademark law — reserving the grant of limited monopolies to those words and designs that are not needed for use by competitors in a competitive marketplace.

In addition to the fact that proving inherent distinctiveness under an intent-based test would be demonstrably simple, Samara is intriguing in that this test was specifically rejected in a district court opinion affirmed by the Second Circuit not two months earlier.(21)

The Supreme Court has granted certiorari, presumably to review the propriety of reliance on the plaintiff's intent in the inherent-distinctiveness analysis. The question posed is: "What must be shown to establish that a product's design is inherently distinctive for purposes of Lanham Act trade-dress protection?"(22)

In its brief, Wal-Mart urges the Court to apply the Abercrombie factors, concluding that under Abercrombie, no product configuration is inherently distinctive.(23) Alternatively, Wal-Mart proposes a new test, which it claims to have derived from precedent, the Restatement (Third) of Unfair Competition, and the PTO's Trademark Manual of Examining Procedure, the "TMEP."(24) Under the proposed test, a product is only inherently distinctive if it is "a consistent and particular design that is so unique as to be automatically, immediately, and primarily perceived as indicating source."(25)

In addition to the parties, several third parties have chimed in on the proper response to this question. The International Trademark Association(26) and the American Intellectual Property Association(27) filed briefs in support of neither party, urging the Court to adopt the Seabrook test. The United States(28) and a number of corporations (many of whom previously had been trade dress litigants)(29) urged adoption of the Seabrook test; however, while the United States urged reversal, the corporate amici urged the Court to affirm.

On the other hand, Payless ShoeSource, Inc.,(30) The International Mass Retail Association,(31) and Private Label Manufacturers Association(32) have filed amicus briefs urging the Court to adopt the more stringent Duraco test.

Interestingly, none of the amici support adoption of the Second Circuit's "intent" test. For example, the United States argued in its brief: "Whether a producer `intended' a product design to be source-identifying, aesthetically pleasing, or both (as will often be the case) should not, however, be relevant in determining whether a claimed trade dress is `inherently' distinctive. That determination turns on the likely perceptions of consumers, not producers: The question is whether the claimed trade dress `almost automatically tells the customer that it refers to a brand.' Whether the producer "intended" such an effect is not relevant; what matters is what consumers are objectively likely to perceive."(33)

It remains to be seen which course the Court will take, although its options appear to include: 1) affirming the Second Circuit decision, thereby opening the door for intent-based determinations in future trade secret cases; 2) adopting one of the existing tests — most likely Abercrombie, Seabrook, or Duraco; or 3) adopting an entirely new set of factors for courts to use in determining whether a product configuration is inherently distinctive.

V. Conclusion

After many years of confusion among the circuits, the Supreme Court now is poised to define the scope of protection afforded product configurations. Whether it adopts the Third Circuit's stringent Duraco test, the amorphous test followed by the Second Circuit in Samara, the Seabrook test, or some other, the Court's decision is likely to provide much-needed guidance in the murky area of the distinctiveness analysis in product configuration cases.

* Charles Henn is an associate in the intellectual property group of Kilpatrick Stockton LLP and a member of the Executive Board of the Atlanta Lawyers Chapter of The Federalist Society.

  1. 165 F.3d 120 (2d Cir. 1998), cert. granted in part, 120 S. Ct. 308 (1999).
  2. See Inwood Labs. v. Ives Labs., 456 U.S. 844, 850 n.10 (1982); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164 (1995).
  3. See, generally, Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992).
  4. 17 U.S.C. 1125(c) (1999).
  5. I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 47 (1st Cir. 1998) (internal citations omitted).
  6. 505 U.S. 763 (1992).
  7. Of course, in Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995), the Court suggested that the color of a product is insufficient in itself to create an inherently distinctive configuration. Id. at 163.
  8. See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976).
  9. See Insty*Bit, Inc. v. Poly-Tech Indus., 95 F.3d 663, 672-73 (8th Cir. 1996); Pebble Beach Co. v. Tour 18 I, Ltd., 936 F. Supp. 1299, 1343 (S.D.Tex. 1996), aff'd as modified, 155 F.3d 526 (5th Cir. 1998).
  10. 568 F.2d 1342 (C.C.P.A. 1977).
  11. See I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 40 (1st Cir. 1998); Tone Bros. v. Sysco Corp., 28 F.3d 1192, 1205 (Fed. Cir. 1994); Brooks Shoe Mfg. Co. v. Suave Shoe Co., 716 F.2d 854, 857-58 (11th Cir. 1983). The Federal Trade Dress Protection Act, H.R. 3136, 105th Cong. Sec. 2(a) (1998) would have adopted this test, but the bill never made it out of committee.
  12. Seabrook, 568 F.2d at 1344.
  13. Duraco Prods. Inc. v. Joy Plastic Enters., 40 F.3d 1431, 1450 (3d Cir. 1994).
  14. See Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 31-32 (2d Cir. 1995).
  15. See Knitwaves v. Lollytogs Ltd., 71 F.3d 996, 1008-09 (2d Cir. 1995).
  16. See Krueger Int'l, Inc. v. Nightingale Inc., 915 F. Supp. 595 (S.D.N.Y. 1996); Ergotron, Inc. v. Hergo Ergonomic Support Sys., Inc., 1996 U.S. Dist. LEXIS 3822, at *14-15 (S.D.N.Y. March 29, 1996).
  17. 165 F.3d 120 (2d Cir. 1998).
  18. See Samara Bros., Inc. v. Judy-Philippine, Inc., 969 F. Supp. 869 (S.D.N.Y. 1997).
  19. Samara, 165 F.3d at 125. The court described the particular configuration at issue as: "the typical use of: seersucker fabric; large bold appliques; large collars with the appliques generally integrated into the collar and any pockets on the garment; 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; full-cut, one-piece conservative bodies." Id. at 126.
  20. Id. at 125.
  21. See Tough Traveler Ltd. v. Outbound Prods., 989 F. Supp. 203, 205 (N.D.N.Y. 1997) (holding that plaintiff's intent is irrelevant to the distinctiveness inquiry), aff'd without op., 165 F.3d 15 (2d Cir. 1998).
  22. See Samara, 120 S. Ct. at 308.
  23. See Petitioner's Brief, 1999 WL 1045142, *24 (1999) ("[A] product configuration cannot be inherently distinctive under the Abercrombie factors because the features of the trade dress sought to be protected constitute the product itself.").
  24. See id. at *32.
  25. Id.
  26. See Brief of Amicus Curiae International Trademark Association, 1999 WL 1037257 (1999) (this brief was co-authored by members of the author's firm).
  27. See Brief of Amicus Curiae American Intellectual Property Association, 1999 WL 1045132 (1999).
  28. See Brief for the United States as Amicus Curiae Supporting Petitioner, 1999 WL 1045127 (1999).
  29. See Brief for Ashley Furniture Inustries, Inc.; Donghia Furniture/Textiles, Ltd.; Draper-DBS, Inc.; Drexel Heritage Furniture Co.; Emerco, Inc.; Foundation for Design Integrity; Imagineering, Inc.; L & J.G. Stickley, Inc.; Landscape Forms, Inc.; 1168983 Ontario, Ltd.; Pebble Beach Co.; Pete's Steakhouse, Inc.; Pinehurst, Inc.; Taco Cabana, Inc.; and Willitts Designs Inernational, Inc. as Amici Curiae Supporting Respondent, 1999 WL 1249426 (1999).
  30. See Brief of Amicus Curiae Payless ShoeSource, Inc., 1999 WL 1045126 (1999).
  31. See Brief of the International Mass Retail Association as Amicus Curiae in Support of Petitioner, 1999 WL 1067496 (1999).
  32. See Brief of Private Label Manufacturers Association as Amicus Curiae in Support of Reversal of the Decision below, 1999 WL 1045135 (1999).
  33. Brief for the United States, 1999 WL 1045127 at *28 (internal citations omitted).

2001 The Federalist Society