by R. Charles Henn Jr.*
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
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
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
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
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
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
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.
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.
- 165 F.3d 120 (2d Cir. 1998), cert. granted
in part, 120 S. Ct. 308 (1999).
- 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).
- See, generally, Two Pesos, Inc. v. Taco Cabana,
Inc., 505 U.S. 763 (1992).
- 17 U.S.C. 1125(c) (1999).
- I.P. Lund Trading ApS v. Kohler Co., 163 F.3d
27, 47 (1st Cir. 1998) (internal citations omitted).
- 505 U.S. 763 (1992).
- 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.
- See Abercrombie & Fitch Co. v. Hunting
World, Inc., 537 F.2d 4, 9 (2d Cir. 1976).
- 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).
- 568 F.2d 1342 (C.C.P.A. 1977).
- 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
- Seabrook, 568 F.2d at 1344.
- Duraco Prods. Inc. v. Joy Plastic Enters.,
40 F.3d 1431, 1450 (3d Cir. 1994).
- See Jeffrey Milstein, Inc. v. Greger, Lawlor,
Roth, Inc., 58 F.3d 27, 31-32 (2d Cir. 1995).
- See Knitwaves v. Lollytogs Ltd., 71 F.3d 996,
1008-09 (2d Cir. 1995).
- 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).
- 165 F.3d 120 (2d Cir. 1998).
- See Samara Bros., Inc.
v. Judy-Philippine, Inc., 969 F. Supp. 869 (S.D.N.Y. 1997).
- 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.
- Id. at 125.
- 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).
- See Samara, 120 S.
Ct. at 308.
- 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.").
- See id. at *32.
- See Brief of Amicus
Curiae International Trademark Association, 1999 WL 1037257 (1999)
(this brief was co-authored by members of the author's firm).
- See Brief of Amicus
Curiae American Intellectual Property Association, 1999 WL 1045132
- See Brief for the United
States as Amicus Curiae Supporting Petitioner, 1999 WL 1045127
- 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).
- See Brief of Amicus
Curiae Payless ShoeSource, Inc., 1999 WL 1045126 (1999).
- See Brief of the International
Mass Retail Association as Amicus Curiae in Support of Petitioner,
1999 WL 1067496 (1999).
- See Brief of Private
Label Manufacturers Association as Amicus Curiae in Support of
Reversal of the Decision below, 1999 WL 1045135 (1999).
- Brief for the United States, 1999 WL 1045127
at *28 (internal citations omitted).