A recent decision of the United States Supreme Court, however, has significantly limited the scope of trade dress protection available for trade dress that is not registered with the U.S. Patent and Trademarks Office. In Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000) (Wal-Mart), the Court made a clear distinction between the protection to be extended to a product presented to the consumer in its packaging, and the protection to be extended to a product presented to the consumer without packaging. This distinction may have significant implications for those who market or sell their products in an e-commerce setting, where products are often removed from their packaging for more effective on-line presentation.
The State of the Law Prior to Wal-Mart
The law of trade dress provides legal protection against infringement or copying if one (generally, the "plaintiff" in a legal setting) can demonstrate that his or her trade dress is both distinctive and non-functional. Prior to the Court's decision in Wal-Mart, "distinctiveness" could be achieved for all types of trade dress in one of two ways:
(1) the trade dress could be inherently distinctive - meaning that the intrinsic nature of the trade dress serves by itself to identify the product as coming from a single source of origin; or
(2) the trade dress could have acquired distinctiveness over time - meaning that, as a result of longstanding, exclusive, and continuous use and advertising, consumers have come to associate the trade dress with a single source of origin. This is often referred to as "secondary meaning."
The U.S. Supreme
Court's Decision in Wal-Mart
The Supreme Court's Wal-Mart
decision changed the face of trade dress law by holding that, in order
to prevail on a trade dress claim based on an unregisteredı product design
or configuration - or even on a claim that is "close" to being based on
product design or configuration - a plaintiff must prove secondary
meaning. A claim that a product design or configuration is inherently
distinctive is no longer sufficient to establish liability under the Lanham
Act.
In Wal-Mart, clothing designer Samara Brothers, Inc. claimed that
its line of children's outfits was protected under the Lanham Act as an
unregistered trade dress. Samara Brothers sued national retailer Wal-Mart
for infringement after Wal-Mart began selling what Samara Brothers considered
to be a confusingly similar line of clothing. Both Samara Brothers' and
Wal-Mart's clothing lines were sold in stores on the rack without any
packaging whatsoever.
In contrast, the Court held that a product's design or configuration (such as the clothing itself) was never inherently distinctive, because consumers were not predisposed to equate the features of a product's design or configuration with the product's source of origin. In fact, the Court held that consumers were "aware of the reality that, almost invariably, even the most unusual of product designs - such as a cocktail shaker shaped like a penguin - is intended not to identify the source, but to render the product itself more useful or more appealing." Id. at 213.
The Court recognized that distinguishing between product design trade dress and product packaging trade dress would be difficult in many cases. For example, "a classic glass Coca-Cola bottle . . . may constitute packaging for those consumers who drink the Coke and then discard the bottle, but may constitute the product itself for those consumers who are bottle collectors, or part of the product itself for those consumers who buy Coke in the classic glass bottle rather than a can, because they think it more stylish to drink from the former." Id. at 215. In these types of close cases, however, the Court instructed courts deciding these cases to "err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning." Id.²
Ultimately, the Court announced a bright-line rule with respect to unregistered product design trade dress, doing away with the option of demonstrating a protectible trade dress based on inherent distinctiveness. By requiring a plaintiff to prove secondary meaning, the Court made it significantly more difficult to establish that a product's design or configuration deserves trade dress protection.³
Implications for E-commerce
The Supreme Court's Wal-Mart decision makes it very clear that trade dress law will now afford much greater protection to products presented to the consumer in packaging than to products presented to the consumer without any packaging. This has significant implications for e-commerce, because a product that is presented to the consumer in its packaging (as is more common in a traditional retail setting) may lose its trade dress protection when it is presented to the consumer without that packaging (as is common in an on-line retail setting).
Although Wal-Mart did not discuss the implications of its holding for on-line marketing, one can surmise from that decision that products presented to the on-line consumer without any packaging may obtain trade dress protection only upon a showing of secondary meaning. Because the Supreme Court has instructed lower courts to "classify ambiguous trade dress as product design, thereby requiring secondary meaning," this may be true even when the same product is simultaneously being sold in a traditional retail setting in distinctive packaging. And, because the focus of trade dress law is on the total image of the product at the time of sale, the fact that a product ordered on-line is shipped to the consumer in its packaging may not change this result.
So what is an on-line retailer to do? Those who have invested significant time, effort, and money in establishing a trade dress which is based on or incorporates the product's packaging must think twice about permitting their products to be advertised or marketed on-line using pictures of the product outside of its packaging. On the other hand, if effective on-line marketing requires that the consumer see the product outside of its packaging, retailers should make efforts to develop in the public's mind a demonstrable connection between the product's design or configuration and its source of origin - in other words, to establish secondary meaning. In determining whether a trade dress has obtained secondary meaning, courts have considered the following:
· the length and manner of plaintiff's use of the trade
dress;
·
the nature and extent of advertising and promotion;
· the efforts made by the plaintiff to promote a conscious connection
in the public's mind between the trade dress and plaintiff's product;
and
·
the extent to which the public actually identifies the trade dress with
the plaintiff's product.
Finally,
if effective on-line marketing requires that the consumer see the product
outside of its packaging, retailers should consider whether their product's
design or configuration is eligible for some additional or different form
of intellectual property protection, such as that provided under the patent,
trademark, and copyright laws.
Ken
Keller, Esq.
Biography
September 20, 2001
Email
the editor with any questions
or comments.
_______________________________________________
Endnotes
ıThe Wal-Mart decision was limited to trade dress that was not
registered with the U.S. Patent and Trademark Office ("PTO"). It is more
difficult for a holder of an unregistered trade dress to prove
that its trade dress deserves protection against copying or infringement
under the Lanham Act than for a holder of a registered trade dress, because
a registered trade dress has already gone through scrutiny by a
federal examiner at the PTO. More detailed information regarding trade
dress registration can be found at 15 U.S.C. §§ 1051-1072.
²An issue that was not addressed by the Wal-Mart Court and remains
to be resolved is the level of protection to be afforded to a product
that is simply encased in clear plastic "packaging," without other traditional
packaging elements (e.g., distinctive graphics, color combinations, etc.).
It is unclear whether, under Wal-Mart, this would qualify as product
configuration trade dress or product packaging trade dress. If it is the
latter, product designers and retailers could circumvent the Wal-Mart
decision by simply placing their products in a clear plastic bag or other
container.
³In addition to the legal difficulty of establishing secondary meaning,
the cost of doing so is also dramatically higher. First, the manufacturer
must invest significant time, effort and money in establishing in the
consumer's mind an association between the trade dress and a single source
of origin. Second, at the time of trial, costly "consumer surveys" regarding
secondary meaning are often required.
