Supreme Court of the United States
TWO PESOS, INC., Petitioner
v.
TACO CABANA, INC.
No. 91-971.
Argued April 21, 1992.
Decided June 26, 1992.
Rehearing Denied Sept. 4, 1992.
See 505 U.S. 1244, 113 S.Ct. 20.
Operator of chain of Mexican restaurants sued operator of similar chain for trade dress infringement under Lanham Act. United States District Court for the Southern District of Texas, John V. Singleton, Jr., J., entered judgment for plaintiff. Defendant appealed. The Court of Appeals, 932 F.2d 1113, affirmed. Certiorari was granted. The Supreme Court, Justice White, held that trade dress which is inherently distinctive is protectable under Lanham Act without showing that it has acquired secondary meaning.
Affirmed.
Justice Scalia issued concurring statement.
Justices Stevens and Thomas issued opinions concurring in judgment.
West Headnotes
[1] Trademarks 
1020
(Formerly 382k464.1, 382k464)
[1] Trademarks
1419
(Formerly 382k464.1, 382k464)
Lanham Act
section prohibiting use of false description or representation in connection
with any goods or services protects qualifying unregistered trademarks. Lanham Trade-Mark Act, § 43(a), as amended, 15
U.S.C.A. § 1125(a).
[2] Trademarks 1020
(Formerly 382k461)
[2] Trademarks 1419
(Formerly 382k461)
General
principles qualifying mark for registration under Lanham Act are for
most part
applicable in determining whether unregistered mark is entitled to protection
under Act. Lanham Trade-Mark Act, §
§ 2, 43(a), as amended, 15
U.S.C.A. § § 1052, 1125(a).
[3] Trademarks 1033
(Formerly 382k25, 382k24,
382k13)
[3] Trademarks
1034
(Formerly 382k23)
Trade
marks may be classified as (1) generic;
(2) descriptive; (3)
suggestive; (4) arbitrary; or (5) fanciful; latter three categories of marks, because
their intrinsic nature serves to identify particular source of product, are deemed inherently distinctive and
are entitled to protection, while generic marks are not registrable as trade
marks. Lanham Trade-Mark Act, § § 2, 45, as amended, 15
U.S.C.A. § § 1052, 1127.
[4] Trademarks 1030
(Formerly 382k10)
General
rule regarding distinctiveness is that identifying mark is distinctive and
capable of being protected if it either is inherently distinctive or has
acquired distinctiveness through secondary meaning. Lanham Trade-Mark Act, § 2(e, f), as amended, 15
U.S.C.A. § 1052(e, f).
[5] Trademarks 1064
(Formerly 382k43)
Eligibility
for protection against trade dress infringement under Lanham Act section
prohibiting use of any false description or representation in connection with
goods or services depends on nonfunctionality.
Lanham Trade-Mark Act, § 43(a),
as amended, 15
U.S.C.A. § 1125(a).
[6] Trademarks 1436
(Formerly 382k596)
Liability
for trade dress infringement under Lanham Act section which prohibits use of
any false description or representation in connection with any goods or
services requires proof of likelihood of confusion. Lanham Trade-Mark Act, §
43(a), as
amended, 15
U.S.C.A. § 1125(a).
[7] Trademarks 1063
(Formerly 382k43)
Trade
dress which is inherently distinctive is protectable under Lanham Act section
prohibiting use of any false description or representation in connection with
any goods or services, without showing that such trade dress has acquired
secondary meaning, since trade dress itself is capable of identifying products
or services as coming from specific source.
Lanham Trade-Mark Act, § 43(a),
as amended, 15
U.S.C.A. § 1125(a).
**2754 Syllabus
[FN*]
FN* The syllabus
constitutes no part of the opinion of the Court but has been prepared by the
Reporter of Decisions for the convenience of the reader. See United
States v. Detroit Lumber Co.,
200 U.S. 321, 337, 26 S.Ct. 282, 287, 50 L.Ed. 499 (1906).
*763 Respondent, the operator of a
chain of Mexican restaurants, sued petitioner, a similar chain, for trade dress
infringement under § 43(a) of the
Trademark Act of 1946 (Lanham Act), which provides that "[a]ny person who
... use[s] in connection with any goods or services ... any false description
or representation ... shall be liable to ... any person ... damaged by [such]
use." The District Court
instructed the jury, inter alia, that respondent's trade dress was
protected if it either was inherently distinctive--i.e., was not merely
descriptive--or had acquired a secondary meaning--i.e., had come through
use to be uniquely associated with a specific source. The court entered judgment for respondent
after the jury found, among other things, that respondent's trade dress is
inherently distinctive but has not acquired a secondary meaning. In affirming, the Court of Appeals ruled
that the instructions adequately stated the applicable law, held that the evidence
supported the jury's findings, and rejected petitioner's argument that a
finding of no secondary meaning contradicted a finding of inherent distinctiveness.
Held:
Trade dress that is inherently distinctive is protectable under § 43(a) without a showing that it has acquired
secondary meaning, since such trade dress itself is capable of identifying
products or services as coming from a specific source. This is the rule generally applicable to
trademarks, see, e.g., Restatement
(Third) of Unfair Competition § 13, pp.
37-38, and the protection of trademarks and of
trade dress under § 43(a) **2755
serves the same statutory purpose of preventing deception and unfair
competition. There is no textual basis
for applying different analysis to the two.
Section 43(a) mentions neither and does not contain the concept of
secondary meaning, and that concept, where it does appear in the Lanham Act, is
a requirement that applies only to merely descriptive marks and not to
inherently distinctive ones. Engrafting
a secondary meaning requirement onto §
43(a) also would make more difficult the identification of a producer
with its product and thereby undermine the Lanham Act's purposes of securing to
a mark's owner the goodwill of his business and protecting consumers' ability
to distinguish among competing producers.
Moreover, it could have anticompetitive effects by creating burdens on
the startup of small businesses.
Petitioner's suggestion that such businesses be protected by briefly
dispensing with the *764 secondary meaning requirement at the outset of
the trade dress' use is rejected, since there is no basis for such requirement
in § 43(a). Pp. 2757- 2761.
932
F.2d 1113, affirmed.
WHITE, J., delivered the opinion of the Court, in which REHNQUIST, C.J., and BLACKMUN, O'CONNOR, SCALIA, KENNEDY and SOUTER, JJ., joined. SCALIA, J., filed a concurring opinion, post, p. 2761. STEVENS, J., post, p. 2761, and THOMAS, J., post, p. 2766, filed opinions concurring in
the judgment.
Kimball
J. Corson argued the cause and filed the
briefs for petitioner.
Richard
G. Taranto argued the cause for
respondent. With him on the brief were H.
Bartow Farr III and James Eliasberg.
[FN*]
* Arthur
M. Handler and Ronald S. Katz filed a
brief for the Private Label Manufacturers Association as amicus curiae
urging reversal.
Brude P. Keller filed a brief for the
United States Trademark Association as amicus curiae.
Justice WHITE delivered the opinion of the Court.
The issue in this case is whether the trade
dress [FN1] of a restaurant may be protected under § 43(a) of the Trademark Act of 1946 (Lanham
Act), 60 Stat. 441, *76515
U.S.C. § 1125(a) 1982 ed.),
based on a finding of inherent distinctiveness, without proof that the trade
dress has secondary meaning.
FN1. The District
Court instructed the jury: "
'[T]rade dress' is the total image of the business. Taco Cabana's trade dress may include the
shape and general appearance of the exterior of the restaurant, the identifying
sign, the interior kitchen floor plan, the decor, the menu, the equipment used
to serve food, the servers' uniforms and other features reflecting on the total
image of the restaurant." 1 App.
83-84. The Court of Appeals accepted
this definition and quoted from Blue
Bell Bio-Medical v. Cin-Bad, Inc.,
864 F.2d 1253, 1256 (CA5 1989): "The 'trade dress' of a product is
essentially its total image and overall appearance." See 932
F.2d 1113, 1118 (CA5 1991). It "involves the total image of a
product and may include features such as size, shape, color or color combinations,
texture, graphics, or even particular sales techniques." John
H. Harland Co. v. Clarke Checks, Inc.,
711 F.2d 966, 980 (CA11 1983). Restatement
(Third) of Unfair Competition § 16, Comment a (Tent.Draft No. 2, Mar. 23, 1990).
I
Respondent Taco Cabana, Inc., operates a chain
of fast-food restaurants in Texas. The
restaurants serve Mexican food. The
first Taco Cabana restaurant was opened in
San Antonio in September 1978, and five more restaurants had been opened in San
Antonio by 1985. Taco Cabana describes
its Mexican trade dress as
"a festive eating atmosphere having interior dining
and patio areas decorated with artifacts, bright colors, paintings and
murals. The patio includes interior and
exterior areas with the interior patio capable of being sealed off from the
outside patio by overhead garage doors.
The stepped exterior of the building is a festive and vivid color scheme
using top border paint and neon stripes.
Bright awnings and umbrellas continue the theme." 932
F.2d 1113, 1117 (CA5 1991).
In December 1985, a Two Pesos, Inc.,
restaurant was opened in Houston. Two
Pesos adopted a motif very similar to the foregoing description of Taco
Cabana's trade dress. Two Pesos
restaurants expanded rapidly in Houston and other markets, but did not enter
San Antonio. In 1986, Taco Cabana
entered **2756 the Houston and Austin markets and expanded into other
Texas cities, including Dallas and El Paso where Two Pesos was also doing
business.
In 1987, Taco Cabana sued Two Pesos in the
United States District Court for the Southern District of Texas for trade dress
infringement under § 43(a) of the Lanham
Act, 15
U.S.C. § 1125(a) (1982 ed.), [FN2] and for theft
of trade secrets *766 under Texas common law. The case was tried to a jury, which was
instructed to return its verdict in the form of answers to five questions propounded by the trial judge. The jury's answers were: Taco Cabana has a trade dress; taken as a whole, the trade dress is
nonfunctional; the trade dress is inherently distinctive; [FN3] the trade dress has not acquired a secondary
meaning [FN4] in the
Texas market; and the alleged
infringement creates a likelihood of confusion on the part of ordinary
customers as to the source or association of the restaurant's goods or services. Because, as the jury was told, Taco Cabana's
trade dress was protected if it either was inherently distinctive or had
acquired a secondary meaning, judgment was entered awarding damages to Taco
Cabana. In the course of calculating
damages, the trial court held that Two Pesos had intentionally and deliberately
infringed Taco Cabana's trade dress. [FN5]
FN2. Section 43(a)
provides: "Any person who shall
affix, apply, or annex, or use in connection with any goods or services, or any
container or containers for goods, a false designation of origin, or any false
description or representation, including words or other symbols tending falsely
to describe or represent the same, and shall cause such goods or services to
enter into commerce, and any person who shall with knowledge of the falsity of
such designation of origin or description or representation cause or procure
the same to be transported or used in commerce or deliver the same to any
carrier to be transported or used, shall be liable to a civil action by any person doing business in
the locality falsely indicated as that of origin or in the region in which said
locality is situated, or by any person who believes that he is or is likely to
be damaged by the use of any such false description or
representation." 60 Stat. 441.
This provision has been superseded by § 132 of the Trademark Law Revision Act of
1988, 102 Stat. 3946, 15
U.S.C. § 1121.
FN3. The instructions
were that, to be found inherently distinctive, the trade dress must not be
descriptive.
FN4. Secondary
meaning is used generally to indicate that a mark or dress "has come
through use to be uniquely associated with a specific source." Restatement
(Third) of Unfair Competition § 13, Comment e (Tent.Draft No. 2, Mar. 23, 1990). "To establish secondary meaning, a
manufacturer must show that, in the minds of the public, the primary
significance of a product feature or term 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, 102 S.Ct. 2182, 2187, n. 11, 72 L.Ed.2d 606 (1982).
FN5. The Court of
Appeals agreed: "The weight of the
evidence persuades us, as it did Judge
Singleton, that Two Pesos brazenly copied Taco Cabana's successful trade dress,
and proceeded to expand in a manner that foreclosed several lucrative markets
within Taco Cabana's natural zone of expansion." 932
F.2d, at 1127, n. 20.
*767 The Court of Appeals ruled that
the instructions adequately stated the applicable law and that the evidence
supported the jury's findings. In
particular, the Court of Appeals rejected petitioner's argument that a finding
of no secondary meaning contradicted a finding of inherent distinctiveness.
In so holding, the court below followed
precedent in the Fifth Circuit. In Chevron
Chemical Co. v. Voluntary Purchasing Groups, Inc.,
659 F.2d 695, 702 (CA5 1981), the court noted
that trademark law requires a demonstration of secondary meaning only when the
claimed trademark is not sufficiently distinctive of itself to identify the
producer; the court held that the same
principles should apply to protection of trade dresses. The Court of Appeals noted that this
approach conflicts with decisions of other courts, particularly the holding of
the Court of Appeals for the Second Circuit in Vibrant
Sales, Inc. v. New Body Boutique, Inc.,
652 F.2d 299 (1981), cert. denied, 455
U.S. 909, 102 S.Ct. 1257, 71 L.Ed.2d 448 (1982),
that § 43(a) protects unregistered
trademarks or designs only where secondary meaning is shown. Chevron,
supra,
at 702.
We granted **2757 certiorari to resolve the conflict among the Courts of Appeals on the question whether
trade dress that is inherently distinctive is protectible under § 43(a) without a showing that it has acquired
secondary meaning. [FN6] 502
U.S. 1071, 112 S.Ct. 964, 117 L.Ed.2d 130 (1992). We find that it is, and we therefore affirm.
FN6. We limited our grant
of certiorari to the above question on which there is a conflict. We did not grant certiorari on the second
question presented by the petition, which challenged the Court of Appeals'
acceptance of the jury's finding that Taco Cabana's trade dress was not
functional.
II
[1][2] The Lanham Act [FN7] was intended to make "actionable the deceptive and
misleading use of marks" and "to protect persons *768 engaged
in ... commerce against unfair competition." § 45,
15
U.S.C. § 1127. Section 43(a) "prohibits a broader range of practices than does
§ 32," which applies to registered
marks, Inwood
Laboratories, Inc. v. Ives Laboratories, Inc.,
456 U.S. 844, 858, 102 S.Ct. 2182, 2190-2191, 72 L.Ed.2d 606 (1982), but it is common ground that § 43(a) protects qualifying unregistered
trademarks and that 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). See A.J.
Canfield Co. v. Honickman,
808 F.2d 291, 299, n. 9 (CA3 1986); Thompson
Medical Co. v. Pfizer Inc.,
753 F.2d 208, 215-216 (CA2 1985).
FN7. The Lanham Act,
including the provisions at issue here, has been substantially amended since
the present suit was brought. See
Trademark Law Revision Act of 1988, 102 Stat. 3946, 15
U.S.C. § 1121.
[3] A trademark is defined in 15
U.S.C. § 1127 as including "any word, name, symbol, or device or any combination
thereof" used by any person "to identify and distinguish his or her
goods, including a unique product, from those manufactured or sold by others
and to indicate the source of the goods, even if that source is
unknown." In order to be
registered, a mark must be capable of distinguishing the applicant's goods from
those of others. § 1052. Marks are often classified in categories of
generally increasing distinctiveness;
following the classic formulation set out by Judge Friendly, they may be
(1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful. See Abercrombie
& Fitch Co. v. Hunting World, Inc.,
537 F.2d 4, 9 (CA2 1976). The Court of Appeals followed this
classification and petitioner accepts it.
Brief for Petitioner 11-15. The
latter three categories of marks, because their intrinsic nature serves to
identify a particular source of a product,
are deemed inherently distinctive and are entitled to protection. In contrast, generic marks--those that
"refe[r] to the genus of which the particular product is a species," Park
'N Fly, Inc. v. Dollar Park & Fly, Inc.,
469 U.S. 189, 194, 105 S.Ct. 658, 661, 83 L.Ed.2d 582 (1985), citing Abercrombie
& Fitch, supra,
at 9--are not registrable as trademarks. Park
'N Fly, supra,
469 U.S., at 194, 105 S.Ct., at 661-662.
*769 Marks which are merely descriptive
of a product are not inherently distinctive.
When used to describe a product, they do not inherently identify a
particular source, and hence cannot be protected. However, descriptive marks
may acquire the distinctiveness which will allow them to be protected under the
Act. Section 2 of the Lanham Act
provides that a descriptive mark that otherwise could not be registered under
the Act may be registered if it "has become distinctive of the applicant's
goods in commerce." § § 2(e), (f), 15
U.S.C. § § 1052(e), (f). See Park
'N Fly, supra,
at 194, 196, 105 S.Ct., at 661-662-663. This acquired distinctiveness is generally
called "secondary meaning."
See ibid.; Inwood
Laboratories, supra,
456 U.S., at 851, n. 11, 102 S.Ct., at 2187; Kellogg
Co. v. National Biscuit Co.,
305 U.S. 111, 118, 59 S.Ct. 109, 113, 83 L.Ed. 73 (1938). The **2758
concept of secondary meaning has been applied to actions under § 43(a).
See, e.g., University
of Georgia Athletic Assn. v. Laite,
756 F.2d 1535 (CA11 1985); Thompson
Medical Co. v. Pfizer Inc., supra.
[4][5][6] The general rule
regarding distinctiveness is clear: An
identifying mark is distinctive and capable of being protected if it either
(1) is inherently distinctive or (2) has acquired distinctiveness
through secondary meaning. Restatement
(Third) of Unfair Competition § 13, pp.
37-38, and Comment a (Tent. Draft No. 2,
Mar. 23, 1990). Cf. Park
'N Fly, supra,
469 U.S., at 194, 105 S.Ct., at 661-662. It is also clear that eligibility for
protection under § 43(a) depends on
nonfunctionality. See, e.g., Inwood
Laboratories, supra,
456 U.S., at 863, 102 S.Ct., at 2193 (WHITE, J.,
concurring in result); see also, e.g.,
Brunswick
Corp. v. Spinit Reel Co.,
832 F.2d 513, 517 (CA10 1987); First
Brands Corp. v. Fred Meyers, Inc.,
809 F.2d 1378, 1381 (CA9 1987); Stormy
Clime Ltd. v. ProGroup, Inc.,
809 F.2d 971, 974 (CA2 1987); AmBrit,
Inc. v. Kraft, Inc.,812
F.2d 1531, 1535 (CA11 1986); American
Greetings Corp. v. Dan-Dee Imports, Inc.,
807 F.2d 1136, 1141 (CA3 1986). It is, of course, also undisputed that
liability under § 43(a) requires proof
of the likelihood of confusion. See, e.g.,
Brunswick
Corp., supra,
at 516-517;
*770AmBrit, supra,
at 1535; First
Brands, supra,
at 1381; Stormy
Clime, supra,
at 974; American
Greetings, supra,
at 1141.
[7] The Court of Appeals determined that the District Court's
instructions were consistent with the foregoing principles and that the
evidence supported the jury's verdict.
Both courts thus ruled that Taco Cabana's trade dress was not descriptive but rather inherently
distinctive, and that it was not functional.
None of these rulings is before us in this case, and for present
purposes we assume, without deciding, that each of them is correct. In going on to affirm the judgment for
respondent, the Court of Appeals, following its prior decision in Chevron, held that Taco Cabana's inherently distinctive trade dress
was entitled to protection despite the lack of proof of secondary meaning. It is this issue that is before us for
decision, and we agree with its resolution by the Court of Appeals. There
is no persuasive reason to apply to trade dress a general requirement of
secondary meaning which is at odds with the principles generally applicable to
infringement suits under § 43(a). Petitioner devotes much of its briefing to
arguing issues that are not before us, and we address only its arguments
relevant to whether proof of secondary meaning is essential to qualify an
inherently distinctive trade dress for protection under § 43(a).
Petitioner argues that the jury's finding that
the trade dress has not acquired a secondary meaning shows conclusively that
the trade dress is not inherently distinctive.
Brief for Petitioner 9. The
Court of Appeals' disposition of this issue was sound:
"Two Pesos' argument--that the jury finding of
inherent distinctiveness contradicts its finding of no secondary meaning in the
Texas market--ignores the law in this circuit.
While the necessarily imperfect (and often prohibitively difficult) methods for assessing
secondary meaning address the empirical question of current consumer
association, the legal recognition of an inherently distinctive trademark or
trade dress acknowledges the *771 owner's legitimate proprietary
interest in its unique and valuable informational device, regardless of whether
substantial consumer association yet bestows the additional empirical
protection of secondary meaning." 932
F.2d, at 1120, n. 7.
Although petitioner makes the above argument,
it appears to concede elsewhere in its brief that it is possible for a trade
dress, even a restaurant trade dress, to be inherently distinctive and thus
eligible for protection under §
43(a). Brief for Petitioner
10-11, 17-18; Reply Brief for Petitioner
10-14. Recognizing that a general requirement of **2759 secondary
meaning imposes "an unfair prospect of theft [or] financial loss" on
the developer of fanciful or arbitrary trade dress at the outset of its use,
petitioner suggests that such trade dress should receive limited protection
without proof of secondary meaning. Id.,
at 10. Petitioner argues that such
protection should be only temporary and subject to defeasance when over time
the dress has failed to acquire a secondary meaning. This approach is also vulnerable for the
reasons given by the Court of Appeals.
If temporary protection is available from the earliest use of the trade dress,
it must be because it is neither functional nor descriptive, but an inherently
distinctive dress that is capable of identifying
a particular source of the product.
Such a trade dress, or mark, is not subject to copying by concerns that
have an equal opportunity to choose their own inherently distinctive trade
dress. To terminate protection for
failure to gain secondary meaning over some unspecified time could not be based
on the failure of the dress to retain its fanciful, arbitrary, or suggestive
nature, but on the failure of the user of the dress to be successful enough in
the marketplace. This is not a valid
basis to find a dress or mark ineligible for protection. The user of such a trade dress should be
able to maintain what competitive position it has and continue to seek wider
identification among potential customers.
*772 This brings us to the line of
decisions by the Court of Appeals for the Second Circuit that would find
protection for trade dress unavailable absent proof of secondary meaning, a
position that petitioner concedes would have to be modified if the temporary
protection that it suggests is to be recognized. Brief for Petitioner 10-14. In Vibrant
Sales, Inc. v. New Body Boutique, Inc.,
652 F.2d 299 (1981), the plaintiff claimed
protection under § 43(a) for a product
whose features the defendant had allegedly copied. The Court of Appeals held that unregistered
marks did not enjoy the "presumptive source association" enjoyed by
registered marks and hence could not qualify for protection under § 43(a) without proof of secondary meaning. Id.,
at 303, 304.
The court's rationale seemingly denied protection for unregistered, but inherently distinctive, marks
of all kinds, whether the claimed mark used distinctive words or symbols or
distinctive product design. The court thus did not accept the arguments that an
unregistered mark was capable of identifying a source and that copying such a
mark could be making any kind of a false statement or representation under § 43(a).
This holding is in considerable tension with
the provisions of the Lanham Act. If a
verbal or symbolic mark or the features of a product design may be registered
under § 2, it necessarily is a mark
"by which the goods of the applicant may be distinguished from the goods
of others," 60 Stat. 428, and must be registered unless otherwise
disqualified. Since § 2 requires secondary meaning only as a
condition to registering descriptive marks, there are plainly marks that are
registrable without showing secondary meaning. These same marks, even if not
registered, remain inherently capable of distinguishing the goods of the users
of these marks. Furthermore, the copier
of such a mark may be seen as falsely claiming that his products may for some
reason be thought of as originating from the plaintiff.
Some years after Vibrant, the Second Circuit announced in Thompson
Medical Co. v. Pfizer Inc.,
753 F.2d 208 (1985), *773 that in deciding
whether an unregistered mark is eligible for protection under § 43(a), it would follow the classification of
marks set out by Judge Friendly in Abercrombie
& Fitch,
537 F.2d, at 9.
Hence, if an unregistered mark is deemed
merely descriptive, which the verbal mark before the court proved to be, proof
of secondary meaning is required;
however, "[s]uggestive marks are eligible for protection without
any proof of secondary meaning, since the connection between the mark and the
source is presumed." 753
F.2d, at 216. The Second Circuit has nevertheless
continued **2760 to deny protection for trade dress under § 43(a) absent proof of secondary meaning,
despite the fact that § 43(a) provides
no basis for distinguishing between trademark and trade dress. See, e.g., Stormy
Clime Ltd. v. ProGroup, Inc.,
809 F.2d, at 974; Union
Mfg. Co. v. Han Baek Trading Co.,
763 F.2d 42, 48 (1985); LeSportsac,
Inc. v. K mart Corp.,
754 F.2d 71, 75 (1985).
The Fifth Circuit was quite right in Chevron, and in this case, to follow the Abercrombie classifications consistently and to inquire whether trade
dress for which protection is claimed under §
43(a) is inherently distinctive. If it is, it is capable of identifying
products or services as coming from a specific source and secondary meaning is
not required. This is the rule
generally applicable to trademarks, and the protection of trademarks and trade
dress under § 43(a) serves the same
statutory purpose of preventing deception and unfair competition. There is no persuasive reason to apply
different analysis to the two. The
"proposition that secondary meaning must be shown even if the trade dress
is a distinctive, identifying mark, [is] wrong, for the reasons explained by
Judge Rubin for the Fifth Circuit in Chevron." Blau Plumbing,
Inc. v. S.O.S. Fix-It, Inc.,
781 F.2d 604, 608 (CA7 1986). The Court of Appeals for the Eleventh
Circuit also follows Chevron,
AmBrit, Inc. v. Kraft, Inc.,
805 F.2d 974, 979 (1986), and the Court of
Appeals for the Ninth Circuit appears to think that proof of secondary meaning
is superfluousif *774 a trade dress is inherently distinctive, Fuddruckers,
Inc. v. Doc's B.R. Others, Inc.,
826 F.2d 837, 843 (1987).
It would be a different matter if there were
textual basis in § 43(a) for treating
inherently distinctive verbal or symbolic trademarks differently from
inherently distinctive trade dress. But
there is none. The section does not
mention trademarks or trade dress, whether they be called generic, descriptive,
suggestive, arbitrary, fanciful, or functional. Nor does the concept of secondary meaning
appear in the text of § 43(a). Where secondary meaning does appear in the
statute, 15
U.S.C. § 1052 (1982 ed.), it is a requirement that applies only to merely
descriptive marks and not to inherently distinctive ones. We see no basis for requiring secondary
meaning for inherently distinctive trade dress protection under § 43(a) but not for other distinctive words,
symbols, or devices capable of identifying a producer's product.
Engrafting onto § 43(a) a requirement of secondary meaning for
inherently distinctive trade dress also would undermine the purposes of the
Lanham Act. Protection of trade dress, no less than of trademarks, serves the
Act's purpose to "secure to the owner
of the mark the goodwill of his business and to protect the ability of
consumers to distinguish among competing producers. National protection of trademarks is
desirable, Congress concluded, because trademarks foster competition and the
maintenance of quality by securing to the producer the benefits of good
reputation." Park
'N Fly,
469 U.S., at 198, 105 S.Ct., at 663, citing
S.Rep. No. 1333, 79th Cong., 2d Sess., 3-5 (1946) (citations omitted). By making more difficult the identification
of a producer with its product, a secondary meaning requirement for a
nondescriptive trade dress would hinder improving or maintaining the producer's
competitive position.
Suggestions that under the Fifth Circuit's
law, the initial user of any shape or design would cut off competition from *775
products of like design and shape are not persuasive. Only nonfunctional, distinctive trade dress
is protected under § 43(a). The Fifth Circuit holds that a design is
legally functional, and thus unprotectible, if it is one of a limited number of
equally efficient options available to competitors and free competition would
be unduly hindered by according the design trademark protection. See Sicilia
Di R. Biebow & Co. v. Cox,
732 F.2d 417, 426 (1984). This serves to assure that competition **2761
will not be stifled by the exhaustion of a limited number of trade dresses.
On the other hand, adding a secondary meaning
requirement could have anticompetitive
effects, creating particular burdens on the startup of small companies. It would present special difficulties for a
business, such as respondent, that seeks to start a new product in a limited
area and then expand into new markets.
Denying protection for inherently distinctive nonfunctional trade dress
until after secondary meaning has been established would allow a competitor,
which has not adopted a distinctive trade dress of its own, to appropriate the
originator's dress in other markets and to deter the originator from expanding
into and competing in these areas.
As noted above, petitioner concedes that
protecting an inherently distinctive trade dress from its inception may be
critical to new entrants to the market and that withholding protection until
secondary meaning has been established would be contrary to the goals of the
Lanham Act. Petitioner specifically
suggests, however, that the solution is to dispense with the requirement of
secondary meaning for a reasonable, but brief, period at the outset of the use
of a trade dress. Reply Brief for
Petitioner 11-12. If § 43(a) does not require secondary meaning at
the outset of a business' adoption of trade dress, there is no basis in the
statute to support the suggestion that such a requirement comes into being
after some unspecified time.
*776 III
We agree with the Court of Appeals that proof
of secondary meaning is not required to prevail on a claim under § 43(a) of the Lanham Act where the trade dress at issue is inherently distinctive, and
accordingly the judgment of that court is affirmed.
It is so ordered.
Justice SCALIA, concurring.
I write separately to note my complete
agreement with Justice THOMAS's explanation as to how the language of § 43(a) and its common-law derivation are broad
enough to embrace inherently distinctive trade dress. Nevertheless, because I find that analysis
to be complementary to (and not inconsistent with) the Court's opinion, I
concur in the latter.
Justice STEVENS, concurring in the judgment.
As the Court notes in its opinion, the text of
§ 43(a) of the Lanham Act, 15
U.S.C. § 1125(a) (1982 ed.), "does not mention trademarks or trade
dress." Ante, at 2760. Nevertheless, the Court interprets this
section as having created a federal cause of action for infringement of an
unregistered trademark or trade dress and concludes that such a mark or dress
should receive essentially the same protection as those that are
registered. Although I agree with the
Court's conclusion, I think it is important to recognize that the meaning of the text has been transformed by
the federal courts over the past few decades.
I agree with this transformation, even though it marks a departure from
the original text, because it is consistent with the purposes of the statute
and has recently been endorsed by Congress.
*777 I
It is appropriate to begin with the relevant
text of § 43(a). [FN1] See, e.g., **2762Moskal
v. United States,
498 U.S. 103, 111 S.Ct. 461, 112 L.Ed.2d 449 (1990); K
mart Corp. v. Cartier, Inc.,
486 U.S. 281, 291, 108 S.Ct. 1811, 1817-1818, 100 L.Ed.2d 313 (1988); United
States v. Turkette,
452 U.S. 576, 580, 101 S.Ct. 2524, 2527, 69 L.Ed.2d 246 (1981). Section 43(a) [FN2] provides a
federal remedy for using either "a false designation of origin" or a
"false description or representation" in connection with any goods or
services. The full text of the section
makes it clear that the word "origin" refers to the geographic
location in which the goods originated, and in fact, the phrase "false
designation of origin" was understood to be limited to false advertising
of geographic origin. For example, the
"false designation of origin" language contained *778 in the
statute makes it unlawful to represent that California oranges came from
Florida, or vice versa. [FN3]
FN1. The text that we consider today is § 43(a) of the Lanham Act prior to the 1988
amendments; it provides:
"Any person who shall affix, apply, or annex, or use
in connection with any goods or services, or any container or containers for
goods, a false designation of origin, or any false description or
representation, including words or other symbols tending falsely to describe or
represent the same, and shall cause such goods or services to enter into commerce,
and any person who shall with knowledge of the falsity of such designation of
origin or description or representation cause or procure the same to be
transported or used in commerce or deliver the same to any carrier to be
transported or used, shall be liable to a civil action by any person doing
business in the locality falsely indicated as that of origin or in the region
in which said locality is situated, or by any person who believes that he is or
is likely to be damaged by the use of any such false description or
representation." 15
U.S.C. § 1125(a) (1982 ed.).
FN2. Section 43(a)
replaced and extended the coverage of §
3 of the Trademark Act of 1920, 41 Stat. 534, as amended. Section 3 was destined for oblivion largely
because it referred only to false designation of origin, was limited to
articles of merchandise, thus excluding services, and required a showing that the use of the
false designation of origin occurred "willfully and with intent to
deceive." Ibid. As a result, "[a]lmost no reported
decision can be found in which relief was granted to either a United States or
foreign party based on this newly created remedy." Derenberg, Federal Unfair Competition Law at
the End of the First Decade of the Lanham Act:
Prologue or Epilogue?, 32 N.Y.U.L.Rev. 1029, 1034 (1957).
FN3. This is clear
from the fact that the cause of action created by this section is available
only to a person doing business in the locality falsely indicated as that of
origin. See n. 1, supra.
For a number of years after the 1946 enactment
of the Lanham Act, a "false description or representation," like
"a false designation of origin," was construed narrowly. The phrase encompassed two kinds of
wrongs: false advertising [FN4] and the common-law tort of "passing off." [FN5] False
advertising meant representing that goods or services possessed characteristics
that they did not actually have and passing off meant representing one's goods
as those of another. Neither
"secondary meaning" nor "inherent distinctiveness" had
anything to do with false advertising, but proof
of secondary meaning was an element of the common-law *779 passing-off
cause of action. See, e.g., G.
& C. Merriam Co. v. Saalfield,
198 F. 369, 372 (CA6 1912) ("The ultimate
offense always is that defendant has passed off his goods as and for those of
the complainant").
FN4. The deleterious
effects of false advertising were described by one commentator as follows: "[A] campaign of false advertising may
completely discredit the product of an industry, destroy the confidence of consumers
and impair a communal or trade good will.
Less tangible but nevertheless real is the injury suffered by the honest
dealer who finds it necessary to meet the price competition of inferior goods,
glamorously misdescribed by the unscrupulous merchant. The competition of a liar is always dangerous
even though the exact injury may not be susceptible of precise
proof." Handler, Unfair
Competition, 21 Iowa L.Rev. 175, 193 (1936).
FN5. The common-law
tort of passing off has been described as follows:
"Beginning in about 1803, English and American common
law slowly developed an offshoot of the tort of fraud and deceit and called it
'passing off' or 'palming off.' Simply stated, passing off as a tort
consists of one passing off his goods as the goods of another. In 1842 Lord Langdale wrote:
" 'I think that the principle on which both the courts
of law and equity proceed is very well understood. A man is not to sell his own goods under the
pretence that they are the goods of another man....'
"In 19th century cases, trademark infringement
embodied much of the elements of fraud and deceit from which trademark
protection developed. That is, the element of fraudulent intent was emphasized
over the objective facts of consumer confusion." 1 J. McCarthy, Trademarks and Unfair
Competition § 5.2, p. 133 (2d ed. 1984)
(McCarthy) (footnotes omitted).
II
Over time, the Circuits have expanded the
categories of "false designation of origin" and "false
description or representation."
One **2763 treatise [FN6] identified
the Court of Appeals for the Sixth Circuit as the first to broaden the meaning
of "origin" to include "origin of source or manufacture" in
addition to geographic origin. [FN7] Another early case, described as unique among
the Circuit cases because it was so "forward-looking," [FN8]
interpreted the "false description or representation" language to
mean more than mere "palming
off." L'Aiglon
Apparel, Inc. v. Lana Lobell, Inc.,
214 F.2d 649 (CA3 1954). The court explained: "We find nothing in the legislative
history of the Lanham Act to justify the view that [§ 43(a) ] is merely declarative of existing
law.... It seems to us that Congress has
defined a statutory civil wrong of false representation of goods in commerce
and has given a broad class of suitors injured or likely to be injured by such
wrong the right to relief in the federal courts." Id.,
at 651.
Judge Clark, writing a concurrence in 1956, presciently observed: "Indeed, there is indication here and
elsewhere that the bar has not yet realized the potential impact of this
statutory provision [§ 43(a)
]." Maternally
Yours, Inc. v. Your Maternity Shop, Inc.,
234 F.2d 538, 546(CA2). Although some have criticized the expansion
as unwise, [FN9] it is now
"a firmly *780 embedded reality." [FN10] The United States Trade Association Trademark
Review Commission noted this transformation with approval: "Section 43(a) is an enigma, but a very
popular one. Narrowly drawn and
intended to reach false designations or representations as to the geographical
origin of products, the section has been widely interpreted to create, in
essence, a federal law of unfair competition.... It has definitely eliminated a gap in unfair
competition law, and its vitality is showing no signs of age." [FN11]
FN6. 2 id., §
27:3, p. 345.
FN7. Federal-Mogul-Bower
Bearings, Inc. v. Azoff,
313 F.2d 405, 408 (CA6 1963).
FN8. Derenberg, 32
N.Y.U.L.Rev., at 1047, 1049.
FN9. See, e.g.,
Germain, Unfair Trade Practices Under §
43(a) of the Lanham Act: You've
Come a Long Way Baby--Too Far, Maybe?, 64 Trademark Rep. 193, 194 (1974)
("It is submitted that the cases have applied Section 43(a) to situations
it was not intended to cover and have used it in ways that it was not designed
to function").
FN10. 2
McCarthy § 27:3, p. 345.
FN11. The United
States Trademark Association Trademark Review Commission Report and
Recommendations to USTA President and Board of Directors, 77 Trademark Rep.
375, 426 (1987).
Today, it is less significant whether the
infringement falls under "false
designation of origin" or "false description or representation" [FN12] because in either case §
43(a) may be invoked. The
federal courts are in agreement that §
43(a) creates a federal cause of action for trademark and trade dress
infringement claims. 1 J. Gilson,
Trademark Protection and Practice §
2.13, p. 2-178 (1991). They are
also in agreement that the test for liability is likelihood of confusion: "[U]nder the Lanham Act [§ 43(a) ], the ultimate test is whether the
public is likely to be deceived or confused by the similarity of the
marks.... Whether we call the violation
infringement, unfair competition or false designation of origin, the test is
identical--is there a 'likelihood of confusion?' " New
West Corp. v. NYM Co. of California, Inc.,
595 F.2d 1194, 1201 (CA9 1979) (footnote
omitted). And the Circuits are in *781
general agreement, [FN13] with perhaps
the exception of **2764 the Second Circuit, [FN14] that secondary meaning need not be established once there
is a finding of inherent distinctiveness in order to establish a trade dress
violation under § 43(a).
FN12. Indeed, in
count one of the complaint, respondent alleged that petitioner "is
continuing to affix, apply, or use in connection with its restaurants, goods
and services a false designation o[f] origin, or a false description and representation, tending to
falsely describe or represent the same," and that petitioner "has
falsely designated the origin of its restaurants, goods and services and has
falsely described and represented the same...." App. 44-45;
see Tr. of Oral Arg. 37.
FN13. See, e.g., AmBrit,
Inc. v. Kraft, Inc.,
805 F.2d 974 (CA11 1986), cert. denied, 481
U.S. 1041, 107 S.Ct. 1983, 95 L.Ed.2d 822 (1987); Blau
Plumbing, Inc. v. S.O.S. Fix-It, Inc.,
781 F.2d 604 (CA7 1986); In
re Morton-Norwich Products, Inc.,
671 F.2d 1332, 1343 (C.C.P.A.1982); Chevron
Chemical Co. v. Voluntary Purchasing Groups, Inc.,
659 F.2d 695 (CA5 1981), cert. denied, 457
U.S. 1126, 102 S.Ct. 2947, 73 L.Ed.2d 1342 (1982); see also Fuddruckers,
Inc. v. Doc's B.R. Others, Inc.,
826 F.2d 837, 843-844 (CA9 1987); M.
Kramer Mfg. Co. v. Andrews,
783 F.2d 421, 449, n. 26 (CA4 1986).
FN14. Consistent
with the common-law background of §
43(a), the Second Circuit has said that proof of secondary meaning is
required to establish a claim that the defendant has traded on the plaintiff's
good will by falsely representing that his goods are those of the plaintiff.
See, e.g., Crescent
Tool Co. v. Kilborn & Bishop Co.,
247 F. 299 (1917). To my knowledge,
however, the Second Circuit has not explained why "inherent
distinctiveness" is not an appropriate substitute for proof of secondary
meaning in a trade dress case. Most of
the cases in which the Second Circuit has said that secondary meaning is
required did not involve findings of inherent distinctiveness. For example, in Vibrant
Sales, Inc. v. New Body Boutique, Inc.,
652 F.2d 299 (1981), cert. denied, 455
U.S. 909, 102 S.Ct. 1257, 71 L.Ed.2d 448 (1982),
the product at issue--a velcro belt--was functional and lacked "any
distinctive, unique or non-functional mark or feature." 652
F.2d, at 305.
Similarly, in Stormy
Clime Ltd. v. ProGroup, Inc.,
809 F.2d 971, 977 (1987), the court described
functionality as a continuum, and placed the contested rainjacket closer to the
functional end than to the distinctive end.
Although the court described the lightweight bag in LeSportsac,
Inc. v. K mart Corp.,
754 F.2d 71 (1985), as having a distinctive
appearance and concluded that the District Court's finding of nonfunctionality
was not clearly erroneous, id.,
at 74, it did not explain why secondary meaning
was also required in such a case.
III
Even though the lower courts' expansion of the
categories contained in § 43(a) is unsupported by the text of the Act, I am
persuaded that it is consistent with the general purposes of the Act. For example, Congressman Lanham, the bill's
sponsor, stated: "The purpose of
[the Act] is to protect legitimate *782 business and the consumers of
the country." [FN15] 92
Cong.Rec. 7524 (1946). One way of
accomplishing these dual goals was by creating uniform legal rights and
remedies that were appropriate for a national economy. Although the protection of trademarks had
once been "entirely a State matter," the result of such a piecemeal
approach was that there were almost "as many different varieties of common
law as there are States" so that a person's right to a trademark "in
one State may differ widely from the rights which [that person] enjoys in
another." H.R.Rep. No. 944, 76th
Cong., 1st Sess., 4 (1939). The House
Committee on Trademarks and Patents, recognizing that "trade is no longer
local, but ...national," saw the need for "national legislation along
national lines [to] secur[e] to the owners of trademarks in interstate commerce
definite rights." Ibid. [FN16]
FN15. The Senate
Report elaborated on these two goals:
"The purpose underlying any trade-mark statute is
twofold. One is to protect the public
so it may be confident that, in purchasing a product bearing a particular
trade-mark which it favorably knows, it will get the product which it asks for and wants to
get. Secondly, where the owner of a
trade-mark has spent energy, time, and money in presenting to the public the
product, he is protected in his investment from its misappropriation by pirates
and cheats. This is the
well-established rule of law protecting both the public and the trade-mark
owner." S.Rep. No. 1333, 79th
Cong., 2d Sess., 3 (1946).
By protecting trademarks, Congress hoped "to protect
the public from deceit, to foster fair competition, and to secure to the
business community the advantages of reputation and good will by preventing
their diversion from those who have created them to those who have not. This is the end to which this bill is
directed." Id., at 4.
FN16. Forty years
later, the USTA Trademark Review Commission assessed the state of trademark
law. The conclusion that it reached
serves as a testimonial to the success of the Act in achieving its goal of
uniformity: "The federal courts now
decide, under federal law, all but a few trademark disputes. State trademark law and state courts are
less influential than ever. Today the
Lanham Act is the paramount source of trademark law in the United States, as
interpreted almost exclusively by the federal courts." Trademark Review Commission, 77 Trademark
Rep., at 377.
*783 Congress has revisited this
statute from time to time, and has accepted the "judicial
legislation" that has created this federal cause of action. Recently, for example, in **2765 the
Trademark Law Revision Act of 1988, 102 Stat. 3935, Congress codified the
judicial interpretation of § 43(a),
giving its imprimatur to a growing body of case law from the Circuits
that had expanded the section beyond its original language.
Although Congress has not specifically
addressed the question whether secondary meaning is required under § 43(a), the steps it has taken in this
subsequent legislation suggest that secondary meaning is not required if
inherent distinctiveness has been established. [FN17] First, Congress broadened the language of
§ 43(a) to make explicit that the
provision prohibits "any word, term, name, symbol, or device, or any combination
thereof" that 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). That language
makes clear that a confusingly similar trade dress is actionable under § 43(a), without necessary reference to
"falsity." Second, Congress
approved and confirmed the extensive
judicial development under the provision, including its application to trade
dress that the federal courts had come to apply. [FN18] Third, the legislative *784 history of
the 1988 amendments reaffirms Congress' goals of protecting both businesses and
consumers with the Lanham Act. [FN19] And fourth, Congress explicitly extended to
any violation of § 43(a) the basic
Lanham Act remedial provisions whose text previously covered only registered
trademarks. [FN20] The aim of the amendments was to apply the
same protections to unregistered marks as were already afforded to registered
marks. See S.Rep.
No. 100-515, p. 40 (1988). These steps buttress the conclusion that
§ 43(a) is properly understood to
provide protection in accordance with the standards for registration in § 2.
These aspects of the 1988 legislation bolster the claim that an
inherently distinctive trade dress may be protected under § 43(a) without proof of secondary meaning.
FN17. "When
several acts of Congress are passed touching the same subject-matter,
subsequent legislation may be considered to assist in the interpretation of
prior legislation upon the same subject."
Tiger
v. Western Investment Co.,
221 U.S. 286, 309, 31 S.Ct. 578, 583-584, 55 L.Ed. 738 (1911); see NLRB
v. Bell Aerospace Co. Division of Textron, Inc., 416
U.S. 267, 275, 94 S.Ct. 1757, 1762, 40 L.Ed.2d 134 (1974); Red
Lion Broadcasting Co. v. FCC,
395 U.S. 367, 380-381, 89 S.Ct. 1794, 1801-1802, 23 L.Ed.2d 371 (1969); United
States v. Stafoff,
260 U.S. 477, 480, 43 S.Ct. 197, 199, 67 L.Ed. 358 (1923) (opinion of Holmes, J.).
FN18. As the Senate
Report explained, revision of § 43(a) is
designed "to codify the interpretation it has been given by the courts.
Because Section 43(a) of the Act fills an important gap in federal unfair
competition law, the committee expects the courts to continue to interpret the
section.
"As written, Section 43(a) appears to deal only with
false descriptions or representations and false designations of geographic
origin. Since its enactment in 1946,
however, it has been widely interpreted as creating, in essence, a federal law
of unfair competition. For example, it
has been applied to cases involving the infringement of unregistered marks,
violations of trade dress and certain nonfunctional configurations of goods and
actionable false advertising claims."
S.Rep.
No. 100-515, p. 40 (1988) U.S.Code Cong. &
Admin.News 1988, pp. 5577, 5605.
FN19.
"Trademark protection is important to both consumers and producers.
Trademark law protects the public by making consumers confident that
they can identify brands they prefer and can purchase those brands without
being confused or misled. Trademark
laws also protec[t] trademark owners.
When the owner of a trademark has spent conside[r]able time and money
bringing a product to the marketplace, trademark law protects the producer from
pirates and counterfeiters." Id.,
at 4.
FN20. See 15
U.S.C. § § 1114, 1116-1118.
IV
In light of the consensus among the Courts of
Appeals that have actually addressed the question, and the steps on the part of
Congress to codify that consensus, stare decisis concerns persuade me to
join the Court's conclusion that secondary meaning is not required to establish
a trade dress violation **2766 under §
43(a) once inherent distinctiveness *785 has been established. Accordingly, I concur in the judgment, but
not in the opinion, of the Court.
Justice THOMAS, concurring in the judgment.
Both the Court and Justice STEVENS decide
today that the principles that qualify a
mark for registration under § 2 of the
Lanham Act apply as well to determining whether an unregistered mark is
entitled to protection under §
43(a). The Court terms that view
"common ground," though it fails to explain why that might be so, and
Justice STEVENS decides that the view among the Courts of Appeals is textually
insupportable, but worthy nonetheless of adherence. See ante, at 2757 (opinion of the
Court); ante, at 2764 (STEVENS,
J., concurring in judgment). I see no
need in answering the question presented either to move back and forth among
the different sections of the Lanham Act or to adopt what may or may not be a
misconstruction of the statute for reasons akin to stare decisis. I would rely, instead, on the language of
§ 43(a).
Section 43(a) made actionable (before being
amended) "any false description or representation, including words or
other symbols tending falsely to describe or represent," when "use[d]
in connection with any goods or services."
15
U.S.C. § 1125(a) (1982 ed.). This
language codified, among other things, the related common-law torts of
technical trademark infringement and passing off, see Inwood
Laboratories, Inc. v. Ives Laboratories, Inc.,
456 U.S. 844, 861, n. 2, 102 S.Ct. 2182, 2192, n. 2, 72 L.Ed.2d 606 (1982) (WHITE, J., concurring in result); Chevron
Chemical Co. v. Voluntary Purchasing Groups, Inc.,
659 F.2d 695, 701 (CA5 1981), cert. denied, 457
U.S. 1126, 102 S.Ct. 2947, 73 L.Ed.2d
1342 (1982), which were causes of action for
false descriptions or representations concerning a good's or service's source
of production, see, e.g., Yale
Electric Corp. v. Robertson,
26 F.2d 972, 973 (CA2 1928); American
Washboard Co. v. Saginaw Mfg. Co.,
103 F. 281, 284-286 (CA6 1900).
*786 At common law, words or symbols
that were arbitrary, fanciful, or suggestive (called "inherently
distinctive" words or symbols, or "trademarks") were presumed to
represent the source of a product, and the first user of a trademark could sue
to protect it without having to show that the word or symbol represented the
product's source in fact. See, e.g.,
Heublein
v. Adams,
125 F. 782, 784 (CC Mass.1903). That presumption did not attach to personal
or geographic names or to words or symbols that only described a product
(called "trade names"), and the user of a personal or geographic name
or of a descriptive word or symbol could obtain relief only if he first showed
that his trade name did in fact represent not just the product, but a producer
(that the good or service had developed "secondary meaning"). See, e.g., Florence
Mfg. Co. v. J.C. Dowd & Co.,
178 F. 73, 74-75 (CA2 1910). Trade dress, which consists not of words or
symbols, but of a product's packaging (or "image," more broadly),
seems at common law to have been thought incapable ever of being inherently
distinctive, perhaps on the theory that the number of ways to package a product
is finite. Thus, a user of trade dress
would always have had to show secondary
meaning in order to obtain protection.
See, e.g., Crescent
Tool Co. v. Kilborn & Bishop Co.,
247 F. 299, 300-301 (CA2 1917); Flagg
Mfg. Co. v. Holway,
178 Mass. 83, 91, 59 N.E. 667 (1901); Philadelphia
Novelty Mfg. Co. v. Rouss,
40 F. 585, 587 (CC SDNY 1889); see also J. Hopkins, Law of Trademarks,
Tradenames, and Unfair Competition § 54,
pp. 140-141 (3d ed. 1917); W. Browne,
Law of Trade-Marks § § 89b,i 89ic, pp.
106-110 (2d ed. 1885); Restatement
(Third) of the Law of Unfair Competition §
16, Comment b (Tent. Draft No. 2,
Mar. 23, 1990) (hereinafter Third Restatement).
Over time, judges have come to conclude that
packages or images may be as arbitrary, fanciful, or suggestive as words or
symbols, **2767 their numbers limited only by the human
imagination. See, e.g., AmBrit,
Inc. v. Kraft, Inc.,
812 F.2d 1531, 1536 (CA11 1986) ("square
size, bright coloring, pebbled texture, *787 polar bear and sunburst
images" of the package of the "Klondike" ice cream bar held
inherently distinctive), cert. denied, 481
U.S. 1041, 107 S.Ct. 1983, 95 L.Ed.2d 822 (1987); see also Third Restatement §
§ 13, 16. A particular
trade dress, then, is now considered as fully capable as a particular trademark
of serving as a "representation or designation" of source under
§ 43(a). As a result, the first user of an arbitrary
package, like the first user of an arbitrary word, should be entitled to the presumption that his package represents
him without having to show that it does so in fact. This rule follows, in my view, from the
language of § 43(a), and this rule
applies under that section without regard to the rules that apply under the
sections of the Lanham Act that deal with registration.
Because the Court reaches the same conclusion
for different reasons, I join its judgment.
For U.S. Supreme Court Briefs See:
1992
WL 672972 (Appellate Brief), PETITIONER'S BRIEF
ON THE MERITS, (March 11, 1992)
1992
WL 672973 (Appellate Brief), REPLY BRIEF ON THE
MERITS, (April 15, 1992)
1992
WL 672975 (Appellate Brief), BRIEF FOR
RESPONDENT, (April 10, 1992)
For Transcript of Oral Argument See:
1992
WL 687823 (U.S.Oral.Arg.), Oral Argument, (April
21, 1992)
505 U.S. 763, 112 S.Ct. 2753, 120 L.Ed.2d 615,
60 USLW 4762, 23 U.S.P.Q.2d 1081
END OF
DOCUMENT