Fundamentals of Trade Dress Protection

Articles and Speeches of Interest

Fundamentals of Trade Dress Protection

For more information regarding this article, Timothy P. Ryan can be reached via email at tpr@escm.com or telephone at 412-566-5990.

I. Statutory Framework

A. Section 43(a) of the Lanham Act creates a federal cause of action for unfair competition. This statutory provision prohibits the sale of goods by use of "any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, which -- (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person. . . ." 15 U.S.C. ? 1125(a) (1988).

B. A claim under section 43(a) is not restricted to registered trademarks. The protections afforded by the statute also extend to unregistered words, symbols, collections of colors and designs that the purchasing public has come to associate with a single name. Duraco Products, Inc. v. Joy Plastic Enterprises, Ltd., 40 F.3d 1431, 1438 (3d Cir. 1994).

C. It is well settled that section 43(a) provides a cause of action for trade dress infringement. Duraco, 40 F.3d at 1438; American Greetings Corp. v. Dan-Dee Imports, Inc., 807 F.2d 1136, 1140 (3d Cir. 1986).

II. Defining Protectable Trade Dress

A. Trade dress is defined as the total image or overall design or appearance of a product or its packaging. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 765 (1992); American Greetings, 807 F.2d at 1141; Rose Art Industries, Inc. v. Raymond Geddes & Co., 31 F. Supp.2d 367 (D.N.J. 1998).

B. Trade dress may include features such as size, shape, color, color combinations, texture and graphics. Two Pesos, 505 U.S. at 765. "Trade dress is a complex composite of features and the law of unfair competition in respect to trade dress requires that all of the features be considered together, not separately." American Greetings, 807 F.2d at 1141; Hershey Foods Corp. v. Mars, Inc., 998 F. Supp. 500, 513 (M.D. Pa. 1998).

C. Functional elements of a product's trade dress are not protectable. "Functional," for purposes of evaluating the protectability of a particular trade dress, has been variously defined by the Third Circuit. See e.g., Merchant & Evans v. Roosevelt Bldg. Products Co., 963 F.2d 628, 635 (3d Cir. 1992) ("Proof of nonfunctionality generally requires a showing that the element of the product serves no purpose other than identification"); United States Golf Ass'n. v. St. Andrews Systems, 749 F.2d 1028, 1033-34 (3d Cir. 1984) ("The question is whether a particular feature of a product is substantially related to its value as a product or service, i.e., if the feature is a part of the function served, or whether the primary value of a particular feature is identification of the provider.").

D. The burden of proving the trade dress at issue to be nonfunctional is on the plaintiff. Versa Products Co. v. Bi-Fold Co., 50 F.3d 189, 199 (3d Cir. 1995).

E. However, even if certain components of the trade dress in question can be construed as "functional," the overall combination of features may nonetheless be nonfunctional and thus protectable. Hershey Foods, 998 F. Supp. at 514.

III. Types of Trade Dress

A. Package trade dress functions the same as a traditional trademark and is used by consumers to identify a company's products. Knorr-Nahrmittel A.G. v. Reese Finer Foods, Inc., 695 F. Supp. 787, 792 (D.N.J. 1988); Rose Art Indus., 31 F. Supp.2d at 372.

B. Package trade dress can relate to a single product, Freixenet, S.A. v. Admiral Wine & Liquor Co., 731 F.2d 148, 149-50 (3d Cir. 1984) (appearance of wine bottle and label), or a line or family of products. Rose Art Indus., 31 F. Supp.2d at 373; see also Chevron Chemical Co. v. Voluntary Purchasing Groups, Inc., 659 F.2d 695, 697 (5th Cir. 1981); Regal Jewelry Co. v. Kings Bridge Int'l., Inc., 999 F. Supp. 477, 486 (S.D.N.Y. 1988).

C. The configuration of a product itself can also serve as protectable trade dress. Duraco Products, 40 F.3d at 1439. "The Lanham Act protection of product configurations extends to the total image of a product including features such as size, shape, color or color combinations, texture, graphics or even particular sales techniques." Duraco Products, 40 F.3d at 1439, quoting Computer Care v. Service Systems Enterprises, Inc., 982 F.2d 1063, 1067 (7th Cir. 1992).

IV. Elements of A Cause of Action for Trade Dress Infringement

A. The United States Supreme Court, in Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992), clarified the standard for trade dress infringement. In order to establish a cause of action for trade dress infringement, a plaintiff must establish that (a) the design is non-functional; (b) the design is inherently distinctive or distinctive by virtue of having acquired secondary meaning; and (c) there is a likelihood of confusion. Two Pesos, 505 U.S. at 770; see also Versa Products, 50 F.3d at 199.

B. Competitors need not insure against all possible confusion or likelihood of confusion. "Rather, a plaintiff may prevail in a trade dress infringement action only if it shows that an appreciable number of ordinarily prudent consumers of the type of product in question are likely to be confused as to the source of the goods." Versa Products, 50 F.3d at 200. The mere possibility that a customer may be misled is not enough. Surgical Supply Service, Inc. v. Adler, 321 F.2d 536, 539 (3d Cir. 1963).

V. Distinctiveness

A. The classic test for determining the distinctiveness of a trademark was set out in Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976). This test has been extended to evaluations of trade dress. Jeffrey Milstein, Inc. v. Greger, Lawler, Roth, Inc., 58 F.3d 27, 31 (2d Cir. 1995).

B. Under the Abercrombie test, marks are classified as either (1) generic, (2) descriptive, (3) suggestive, or (4) arbitrary or fanciful. Suggestive, arbitrary and fanciful marks and dresses are always considered inherently distinctive, in that their intrinsic nature serves to identify a particular source of a product or they are capable of identifying a particular source of the product, whether or not the trade dress has acquired secondary meaning or a wide public association with the source. Two Pesos, 505 U.S. at 767. Descriptive marks are protected only if they have acquired secondary meaning. Generic marks receive no protection. The Supreme Court, in Two Pesos, unequivocally concluded that an inherently distinctive trade dress is protectable without a showing of secondary meaning.

C. Analytically, the Abercrombie classifications do not always translate easily to a trade dress analysis. In the context of product packaging labels, the analysis remains relatively straightforward because the trade dress, like traditional trademarks, have the advantage of using products and symbols independent of the product to convey information to consumers. However, analytical difficulties relating to the application of the Abercrombie principles may be experienced when applied to trade dress involving product designs and configurations.

D. In Duraco, the Third Circuit departed dramatically from the traditional Abercrombie analysis in determining inherent distinctiveness in product configuration trade dress infringement cases. The court concluded that the taxonomy set forth in Abercrombie should not be applied to determine the distinctiveness of product configurations where the trade dress lies in the product itself. The court reasoned that, "[u]nlike product packaging, product configuration differs fundamentally from the product's trademark, insofar as it is not a symbol according to which one can relate the signifier . . . to the signified." The Third Circuit alternatively fashioned a three part test for inherent distinctiveness in the context of configuration trade dress. Pursuant to this newly crafted test, to be considered inherently distinctive, configuration trade dress must be unusual and memorable, be conceptually separable from the product, and primarily serve as a designator of the source of the product. The Third Circuit test has been criticized as imposing traditional secondary meaning requirements irrespective of the fact that the Supreme Court eliminated such requirements for the protection of inherently distinctive trade dress in Two Pesos.

E. The Third Circuit's analysis in Duraco has been specifically rejected by a number of circuits. See e.g., Stuart Hall Co., Inc. v. Ampad Corp., 51 F.3d 788 (8th Cir. 1995); Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996 (2d Cir. 1995).

F. The net effect of the Third Circuit's analysis in Duraco is to set a relatively high standard for a plaintiff pursuing a claim for trade dress infringement with respect to a product design or configuration.

G. In the event that inherent distinctiveness cannot be established, a plaintiff must then demonstrate that the trade dress at issue has acquired secondary meaning. Generally, to establish secondary meaning, "a manufacturer must show that in the minds of the public, the primary significance of a product feature is to identify the source of the product rather than the product itself." Ideal Toy Corp. v. Plawner Toy Mfg. Corp., 685 F.2d 78, 82 (3d Cir. 1982). Relevant factors in addressing the issue of secondary meaning include: (1) the length of time the trade dress has been used by a single producer; (2) the amount of sales and image advertising of the trade dress; (3) actual buyer association; and (4) the fact of copying. Freixenet, 731 F.2d at 150.

VI. Likelihood of Confusion

A. A plaintiff must also establish that there is a likelihood of confusion between the plaintiff's trade dress and the trade dress being complained of. If confusion is not likely, trademark or trade dress law is not offended merely because multiple sources offer identical products. Merchant and Evans, 963 F.2d at 639. "[R]egardless of how much secondary meaning it possesses, a product's trade dress will not be protected from an imitation that is sufficiently different in its features to avoid such confusion." Freixenet, 731 F.2d at 151.

B. Courts have applied traditional trademark analyses in evaluating the issue of likelihood of confusion in trade dress cases. The analysis of likelihood of confusion requires a court to evaluate a number of factors including: (1) the degree of similarity between the owner's mark and the alleged infringing mark; (2) the strength of the owner's marks; (3) the price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase; (4) the length of time the defendant has used the mark without evidence of actual confusion arising; (5) the intent of the defendant in adopting the mark; (6) evidence of actual confusion; (7) whether the goods, though not in competition, are marketed through the same channels of trade and advertised through the same media; (8) the extent to which the targets of the party's sale efforts are the same; (9) the relationship of the goods in the minds of the public because of the similarity of function; (10) other facts suggesting that the consuming public might expect the owner to manufacture a product in the defendant's market. Ford Motor Co. v. Summit Motor Products, Inc., 930 F.2d 277, 297 (3d Cir.), cert. denied, 502 U.S. 939 (1991). See also Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d 1225, 1229 (3d Cir. 1978).

C. In trade dress infringement cases involving product packaging, the similarity of protectable trade dress should be considered the first and primary factor. Versa Products, 50 F.3d at 202. "Similarity of appearance is properly considered paramount in trademark and product packaging trade dress infringement cases, for unless the allegedly infringing mark or dress is substantially similar to the protectable mark or dress, it is highly unlikely that consumers will confuse the product sources represented by the different marks or trade dress." Id. However, in product configuration cases, substantial similarity of appearance is necessarily a prerequisite to a finding of likelihood of confusion though such a conclusion does not by itself establish a likelihood of confusion under current Third Circuit law. The Third Circuit has held that, in a product configuration trade dress infringement case, consumers do not have to rely exclusively on a potentially distinctive configuration to identify the source of the product but, rather, can generally look to the packaging, trademarks and advertising used to market the product which often may be less ambiguous. Versa Products, 50 F.3d at 202-03. Hence, in trade dress infringement suits where the dress involves a product configuration, the primary factors to be considered in assessing the likelihood of confusion are the product's labelling, packaging and advertisements.

D. The strength of the owner's mark in a traditional trademark or packaging trade dress infringement case directly affects the likelihood that consumers will be confused as to the sources of products bearing substantially similar marks. Strength here describes both distinctiveness on the scale of trademarks and the commercial strength or marketplace recognition of the mark. A strong trademark carries widespread, immediate recognition that one producer is associated with the mark and, consequently with the product. If the secondcomer adopts a mark substantially identical to the strong mark, there is a high likelihood that consumers will mistakenly associate the newcomer's product with the owner of the strong mark. Again, however, the Third Circuit has held that the strength of the owner's mark factor does not translate well into the product configuration trade dress analysis. The strength of a product's configuration as relevant to determining the likelihood of confusion could be found only if consumers rely on the product's configuration to identify the producer of the goods. This may occur when products are purchased largely because of their appearance. However, the Third Circuit has held that such a focus is not generally found in and should not be encouraged in the industrial design context where a product's appearance typically plays a lesser role in a buyer's selection process. Versa Products, 50 F.3d at 204.

E. The third Scott factor is the price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase. In a traditional trademark or trade dress packaging context, the general rule is that the greater the care and attention, the lesser the likelihood of confusion. See e.g., Fisons Horticulture, Inc. v. Vigoro Indus., Inc., 30 F.3d 466, 476 (3d Cir. 1994). In Versa Products, the Third Circuit concluded that the attention expected of consumers factor in a product configuration trade dress analysis takes on enhanced importance.

F. The fourth Scott factor is the length of time the defendant has used the mark without evidence of actual confusion arising. This factor has been applied to product configuration cases as well as to trademark and product packaging actions. Essentially, this factor evaluates the length of time that a defendant's product has been sold without evidence of actual confusion. The longer the challenged product has been in use, the stronger this inference will be.

G. The fourth Scott factor is directly related to the sixth factor which is evidence of actual confusion. The more evidence of actual confusion that a plaintiff can muster, the stronger the likelihood of confusion in the future. However, the law is clear that proof of actual confusion is not required for a successful trade dress infringement action under the Lanham Act. Ford Motor Co., 930 F.2d at 292; Opticians Ass'n. v. Independent Opticians, 920 F.2d 187, 195 (3d Cir. 1990).

H. The fifth Scott factor is the intent of the defendant in adopting the mark. The Third Circuit has concluded that a defendant's intent to confuse or deceive consumer's as to a product's source is highly probative of likelihood of confusion in product packaging trade dress cases. See e.g., American Home Products v. Barlab, Inc., 834 F.2d 368, 371 (3d Cir. 1987). However, in Versa Products, the Third Circuit held that the intent of the defendant in adopting a particular product configuration is not an appropriate consideration in a trade dress infringement case where the trade dress is alleged in the product configuration itself. Versa Products, 50 F.3d at 205.

I. Marketing considerations constitute the balance of the Scott factors. Each of these factors needs to be applied with care in a product packaging trade dress infringement analysis. However, in Versa Products, the Third Circuit held that none of these remaining factors tend to establish a probability of confusion and, thus, should be treated as necessary but insufficient conditions for showing a likelihood of confusion. Versa Products, 50 F.3d at 208. These remaining factors are whether the goods, though not competing, are marketed through the same channels of trade and advertised through the same media; the extent to which the targets of the party's sales efforts are the same; the relationship of the goods in the minds of the public because of the similarity of function; and other facts suggesting that the consuming public might expect the prior owner to manufacture a product in the defendant's market. These factors primarily were developed for noncompeting products and, according to the Third Circuit are "largely superfluous in product configuration cases." Versa Products, 50 F.3d at 208.

J. The Duraco and Versa Products decisions by the Third Circuit, when considered together, establish a very high standard for a plaintiff pursuing a claim of trade dress infringement in a product configuration context. This standard is heightened even further when considered in conjunction with the Third Circuit's repeated admonition that virtually any confusion relating to product configuration can be dispelled by appropriate labelling. Versa Products, 50 F.3d at 213.

K. The issue remains as to whether the Third Circuit has departed from the guidance provided by the Supreme Court in Two Pesos where it was held that inherently distinctive trade dress, even in the context of "product configuration," is protectable without a showing of secondary meaning.

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