Duraco Prod. Inc. v. Joy Plastic Ent. ( 1994 )

Opinions of the United
1994 Decisions States Court of Appeals
for the Third Circuit
11-15-1994
Duraco Prod. Inc. v. Joy Plastic Ent.
Precedential or Non-Precedential:
Docket 94-3323
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UNITED STATES COURT OF APPEALS
FOR THE THIRD CIRCUIT
_____________________
No. 93-3323
_____________________
DURACO PRODUCTS, INC.,
Appellant
v.
JOY PLASTIC ENTERPRISES, LTD.,
d/b/a BACKYARD PRODUCTS;
TRAVIS PRODUCTS, INC.
_________________________________________________________
On Appeal From the United States Court of Appeals
for the Western District of Pennsylvania
(D.C. Civil No. 92-00270E)
_________________________________________________________
Argued: February 17, 1994
Before: BECKER, HUTCHINSON, and COWEN, Circuit Judges
(Filed November 15, 1994)
JAMES R. KYPER (Argued)
MARK R. LESLIE
Kirkpatrick & Lockhart
1500 Oliver Building
Pittsburgh, PA 15222
Attorneys for Appellant
CRAIG A. MARKHAM (Argued)
HARRY D. MARTIN
Elderkin, Martin, Kelly, Messina &
Zamboldi
150 East Eighth Street
Box 1819
Erie, PA 16507
Attorneys for Travis Products, Inc.,
Appellee
JOHN B. FESSLER (Argued)
Marsh, Spaeder, Baur, Spaeder & Schaaf
300 State Street, Suite 300
Erie, PA 16507
W. PATRICK DELANEY
MacDonald, Illig, Jones & Britton
100 State Street, Suite 700
Erie, PA 16507
Attorneys for Joy Plastic
Enterprises, Ltd., d/b/a Backyard
Products, Appellee
______________________________________
OPINION OF THE COURT
______________________________________
BECKER, Circuit Judge.
This is a trade dress infringement action brought under
section 43(a) of the Lanham Act, 15 U.S.C.A. § 1215(a) (Supp.
1994). Plaintiff Duraco Products, Inc. ("Duraco") appeals from
an order of the district court denying its motion for a
preliminary injunction against defendants Joy Plastic
Enterprises, Ltd. ("Joy"), d/b/a Backyard Products, and Travis
Products, Inc. ("Travis"). Duraco, a manufacturer of plastic
planters for use in gardens, claims that Joy has infringed the
trade dress of Duraco's most popular product by marketing a
planter with a similar shape and texture, and that Travis is
liable for manufacturing the molds for Joy's planter. Because
Duraco's claim is predicated upon infringement of the trade dress
of the product itself, the appeal requires us to confront a
difficult area of trade dress law -- that dealing with the
circumstances under which product configurations, in contrast to
product packaging, can, in Lanham Act parlance, constitute
inherently distinctive trade dress thus serving as a designator
of origin that will protect the plaintiff's product design
features against copying.
We conclude that traditional trade dress doctrine does
not "fit" a product configuration case because unlike product
packaging, a product configuration differs fundamentally from a
product's trademark, insofar as it is not a symbol according to
which one can relate the signifier (the trademark, or perhaps the
packaging) to the signified (the product). In other words, the
very basis for the trademark taxonomy -- the descriptive
relationship between the mark and the product, along with the
degree to which the mark describes the product -- is unsuited for
application to the product itself.
However, we also think that there is a proper set of
circumstances for treating a product configuration as inherently
distinctive. These circumstances are characterized by a high
probability that a product configuration serves a virtually
exclusively identifying function for consumers -- where the
concerns over "theft" of an identifying feature or combination or
arrangement of features and the cost to an enterprise of gaining
and proving secondary meaning outweigh concerns over inhibiting
competition, and where consumers are especially likely to
perceive a connection between the product's configuration and its
source. We conclude that, to be inherently distinctive, a
product feature or a combination or arrangement of features, i.e,
a product configuration, for which Lanham Act protection is
sought must be (i) unusual and memorable; (ii) conceptually
separable from the product; and (iii) likely to serve primarily
as a designator of origin of the product.
The district court applied a different standard, and in
the ordinary course we might remand for reconsideration under the
proper test. However, our examination of the record persuades us
that, under the standard we adopt, no factfinder could reasonably
conclude that Duraco has demonstrated a likelihood of success on
the merits by meeting the threshold distinctiveness requirement
of section 43(a) either through a showing of inherent
distinctiveness or, failing that, by establishing secondary
meaning. We will therefore affirm the district court's order.
However, the district court will have to conduct a final hearing
at which it will apply the newly announced standard. In view of
our disposition, we need not reach the other grounds that the
district court gave for its denial of a preliminary injunction,
i.e., non-functionality of the trade dress and failure to show a
likelihood of confusion.
I. FACTS AND PROCEDURAL HISTORY
A. The Relevant Facts
Duraco's most profitable products, its "Grecian Classics"
plastic planters, account for one tenth of its nearly $35 million
in annual sales. These planters, shaped like a Grecian urn, are
made in two sizes, with diameters of twelve and eighteen inches
and heights of ten and fifteen inches, respectively. Their
plastic construction makes them inexpensive and durable. But the
key to their considerable success, according to Duraco, is that a
careful combination of ornamental features creates in them the
illusion of marble, cement, or stone construction.
The stimulus for the Duraco urn's design was a suggestion
by Robert Armstrong, a Senior Buyer at K-Mart, Duraco's largest
retailer customer. Armstrong had run across urn-shaped planters
similar in appearance to the eventual design of the Grecian
Classics at a trade show in the Federal Republic of Germany
sometime in 1984. Realizing that like products were not then
available in the United States, Armstrong met with Duraco
officials to describe his fortuitous discovery and to encourage
Duraco to manufacture such an item. Duraco, in turn, set about
to satisfy Armstrong's interest. It surveyed Grecian urns at
statuary stores and explored its own archives. As it happened,
in the late 1970s Duraco had tried to market the "Cotswold
Planter," an English-made Grecian plastic planter. Poor sales,
perhaps attributable to its relatively high retail price tag --
$14.99 compared to under $5.00 for the Grecian Classics -- caused
Duraco to drop the product two years later. The Cotswold may
have survived in United States commerce for some time thereafter,
but was no longer available at the time of the Armstrong-Duraco
conference.
The Grecian Classics are much like, but not clones of,
the Cotswold. Both planters have an hourglass-like design and
fluting, though the Cotswold has a higher base (hence a higher
center of gravity), softer lines, and a less realistic texture.
Despite the differences, Armstrong would have been pleased with a
replica of the Cotswold urn.
Once Duraco showed Armstrong its prototype, K-Mart
committed itself to purchase 100,000 Grecian Classics planters
from Duraco. With no competing plastic urn in the United States
sporting a similar, detailed design, sales of the eighteen-inch
Grecian Classics planter reached 460,000 the first year, making
it Duraco's leading seller. This overwhelming success persuaded
Duraco to manufacture a twelve-inch cousin; sales continued to
soar.
Today, Duraco markets the bulk of its planter wares
directly to large retailers, primarily large discount department
stores; some distributors are directly supplied. Advertising is
typically done cooperatively with the retailers: the parties
share costs, and Duraco allows the retailer to use two percent of
sales receipts for advertising, redeemable in cash or credit.
The media generally relied upon for consumer advertising are
Sunday newspaper fliers, magazines, circulars, and newspaper ads.
In those types of advertising, the planters are generally
depicted in juxtaposition with other outdoor garden products,
such as plant food and watering cans. Duraco also solicits
retailers with brochures and trade advertisements.
In its marketing endeavors, Duraco encourages, but does
not contractually require, its retailer customers to place either
the Duraco tradename or its registered trademark "Garden Scene"
logo in their advertisements. Although a retailer's failure to
display Duraco's logo results, at worst, in an admonition, half
of the planter advertisements contain the logo. Nevertheless,
brand-name awareness in the outdoor garden products area is
slight -- less than 0.5 percent of consumers in Duraco's survey
recognized the Duraco name. This is probably so because planters
are inexpensive and are typically bought as an impulse item.
A number of enterprises compete with Duraco in the
plastic planter market, amongst them the defendant Joy. Joy,
also known by its "Backyard Products" logo, calls its planters
"Ultimate Urns." Defendant Travis manufactures the molds for the
plastic planters; Joy markets them. The interest of Joy's
President Thomas Gay in producing a planter configured like a
classic Grecian urn had been piqued by a color brochure depicting
the Cotswold urn. In 1987 and 1988, he approached buyers at K-
Mart and another retailing chain, both of which already stocked
Duraco's Grecian Classics, to elicit information regarding the
potential for a competitor to Duraco in the plastic urn market.
Having received favorable feedback, Gay undertook the development
of the Backyard Products urn.
During the development phase Gay had access to various
urns in the market, including the Grecian Classics. His
considered observation and analysis of all those urns' features
convinced him to design one with a deeper bowl -- to hold more
soil and water for enhanced root development -- and with a lower
center of gravity -- because some other urns, such as the Duraco
urns, were too top-heavy and subject to tipping over. After
completing his design, Gay engaged defendant Travis to create the
plastic injection mold for the Ultimate Urns. Joy's Ultimate
Urns are strikingly similar in appearance to Duraco's Grecian
Classics. Both planters have a similar construction, and both
are structured in two parts, a top "bowl" section that connects
at a joint with the "base" or "pedestal" of the planter. Like
Duraco, Joy offers a twelve-inch, reduced-scale version of its
eighteen-inch model.
According to Richard Husby, Duraco's Vice President of
Marketing and Sales, the Ultimate Urns cannot truly compare to
the Grecian Classics by virtue of Joy's failure to match Duraco's
punctilious quality control. Joy's planters, of comparatively
poor quality according to Husby, can be found in the market with
drooping flash, poor color, and sharp edges and ridges. The
inferior coloring is said to stem from Joy's reliance on a less
expensive coloring process, and Husby testified that Joy's
inferior molding technique causes blotching on the urns' bottoms.
The uneven edges of Joy's planters are caused by Joy's cutting
away, rather than sanding off, the flashing.1
1. A significant drawback of the injection molding process,
the technique Duraco uses to manufacture the planters, is that
strips of plastic, called "flashing," sometimes form on the
planters' sides as a result of cracks in the molds or excessive
Other differences between the Grecian Classics and
Ultimate Urns, unrelated to quality, can be noted, though only in
a sharply focused side-by-side comparison. The Duraco planter
has higher fluting (used on the bowl and pedestal of the planters
to create the illusion of an actual marble or alabaster planter)
and a wider "landing" on the lip between each flute; the Backyard
Products urn has a broader base, a lower center of gravity
(causing it to withstand tipping better), and a twenty percent
greater fill capacity. The side of the Backyard Products urn's
bowl is straight-edged, whereas the Grecian Classics' curves in
an arc. Visual coincidence in detail can be noted in the "egg
and dart" patterns, used primarily for decoration and
subsidiarily to strengthen the rim, on the lips of the planters'
bowls.
Duraco inadvertently became aware of Joy's competition
when Duraco's President and Chief Executive Officer John Licht
stumbled across a Backyard Products planter while shopping in a
New Jersey retail store. He saw a defective urn -- one side of
it was flattened, apparently because it had been removed from the
mold and laid on its side in a shipping carton while still hot --
and purchased it, thinking it to be a defective Duraco urn. He
turned the urn over to Duraco's vice president, demanding to know
how a defective urn could have slipped through Duraco's quality
(..continued)
production rates. Flashing can be sharp, threatening injury to
someone handling the planter, and unsightly, detracting from the
aesthetics of the planter. To combat this irregularity Duraco
employs quality control workers for the purpose, inter alia, of
carefully sanding away any flashing from completed planters.
control safety net into the marketplace. When the vice president
returned with news that the urn was Joy's, not Duraco's, Licht
phoned Duraco's attorney.
Duraco claims that its "trade dress" differs
significantly from the designs of all other competitors save Joy.
Duraco does not claim that any of the classical elements in its
urn's design is protectable; rather, Duraco defines the
uniqueness of its trade dress according to the total composition
of all the elements of its urns' configuration, including the
rim, the finish, the joining of the top and bottom halves, and
the color results. Duraco not only adduced evidence that other
competitors had come up with patently different designs for
plastic planters, but also presented five designs by its expert
designer that, according to the expert, could compete effectively
in the market for "contemporary interpretations of neoclassic
planters using modifications of classical motifs." Mem. op. at
9. His five designs assertedly achieved the desired motif
through variations on sundry classical elements, including the
fluting, rims, radii, pedestals, and egg-and-dart design on the
bowl's rim. Thus, in Duraco's submission, Joy could have
competed effectively without infringing Duraco's trade dress.2
2
. Duraco alleges that Joy's competition has negatively
affected Duraco's pricing power in the retailer market, costing
it an estimated $600,000 in profits. K-Mart threatened a switch
to Ultimate Urns unless the price of Grecian Classics planters
were lowered; the savings, however, apparently were absorbed by
the retailer and not passed through to the final consumer.
Moreover, despite losing some retail accounts to Joy, Duraco's
sales slightly improved in 1992.
B. The District Court's Disposition
The district court's denial of Duraco's motion for a
preliminary injunction was based on several grounds. First, it
concluded that Duraco had failed to show a likelihood of success
on the merits. The court disagreed with Duraco that the design
of the Grecian Classics was distinctive. According to the court,
"[a]ny consumer looking at the Duraco, Backyard [Products], and
Cotswold planters would say that all three are Grecian urn
planters." Mem. op. at 8-9. It continued, remarking that "[t]o
this observer, all of the urns introduced as exhibits, including
plaintiff's, defendants' or others', looked about the same, as
did those presented in drawings by Mr. Hart, the designer." Id.
at 10.3
3
. The court facetiously crowned its comparison with the
adapted aphorism, "[a]n urn is an urn is an urn." Id. Cf.
Gertrude Stein, Sacred Emily (1913) ("Rose is a rose is a rose is
a rose."), in GEOGRAPHY AND PLAYS 178, 187 (1922). That
characterization of modern plastic urns is, of course, a far cry
from the eloquent words of Keats, who, saluting a Grecian urn of
a far more exquisite nature, and lacking the prescience to
foresee the commercialization of the classical Grecian form,
penned these timeless words of adulation:
Thou still unravish'd bride of quietness,
Thou foster-child of silence and slow time,
Sylvan historian, who canst thus express
A flowery tale more sweetly than our rhyme:
What leaf-fring'd legend haunts about thy shape
Of deities or mortals, or of both,
In Tempe or the dales of Arcady?
John Keats, Ode on a Grecian Urn (excerpt from first stanza).
Applying a taxonomy of trademark distinctiveness
consisting of generic, descriptive, suggestive, and arbitrary or
fanciful marks, the court found that the Grecian Classics
planters were descriptive at best: "The Duraco urn is clearly
just that, an urn. When purchased or inspected, the consumer
immediately knows the nature of the good before them [sic]: a
plastic planter." Id. at 13. The court further found that the
planters' descriptive trade dress had not acquired secondary
meaning in the market, as
[t]here was no evidence that consumers, whether K-Mart
buyers or retail customers, perceived that the product
emanates from a single source, or, for that matter, that
the public identified the Duraco planter with the Duraco
or Garden Scene name. The consumer does not appear to be
moved in any degree to buy the Duraco planter because of
its source. Buyers for the K-Mart stores seemed to be
motivated largely by their profit margin.
Id. at 15. Alternatively, the court found the trade dress to be
"generic."
The court also thought the design to be functional,
"because [all the design elements are] necessary for classically
styled urns, [and] in combination create the illusion of an
alabaster chiseled urn." Id. at 17. Furthermore, the court
found that there was no likelihood of consumer confusion, both
because consumers are disinterested in the identity of the
manufacturer and because there was no evidence of actual consumer
confusion (neglecting that of Duraco's president, who is not
truly a consumer) that Joy's product was Duraco's.4
4
. As to the other requirements for a preliminary
injunction, the court held: (i) that there was no merit to
Duraco's claim of irreparable harm due to lost profits,
C. Jurisdiction and Standard of Review
The district court had original jurisdiction pursuant to
28 U.S.C.A. § 1338 (West 1993) (granting district courts original
jurisdiction over trademark cases). Appellate jurisdiction is
invoked pursuant to 28 U.S.C.A. § 1292(a)(1) (West 1993)
(granting courts of appeals jurisdiction over certain
interlocutory orders, including denials of preliminary
injunctions).
Duraco appeals the denial of its motion for a preliminary
injunction in its action under section 43 of the Lanham Act, 15
U.S.C.A. § 1125(a) (Supp. 1994).5 We explained the requisites
(..continued)
likelihood of confusion, and the lower quality of Joy's products,
because Duraco's sales have remained at healthy levels; (ii) that
the balance of hardships favored Joy, since an injunction would
destroy its entire business whereas Duraco carried multiple
product lines, had increased its sales, and had shown no
likelihood of confusion, loss of consumer good will, or detriment
to reputation; and (iii) that the public interest favored healthy
competition over trade dress protection because there had been no
showing of a likelihood of confusion. Because we resolve this
case on the likelihood of success on the merits prong, we will
not review these other conclusions.
5
. That section now provides:
Any person who, on or in connection with any goods
or services, or any container for goods, uses in commerce
any word, term, name, symbol, or device, or any
combination thereof, or any false designation of origin,
false or misleading description of fact, or false or
misleading representation 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, or
for the issuance of a preliminary injunction as well as the
nature of our review in such appeals in Merchant & Evans, Inc. v.
Roosevelt Building Products Co., 963 F.2d 628 (3d Cir. 1992):
In ruling on a motion for a preliminary injunction,
the district court must consider: (1) the likelihood
that the plaintiff will prevail on the merits at [the]
final hearing; (2) the extent to which the plaintiff is
being irreparably harmed by the conduct complained of;
(3) the extent to which the defendant will suffer
irreparable harm if the preliminary injunction is issued;
and (4) the public interest. Opticians Ass'n v.
Independent Opticians, 920 F.2d 187, 191-92 (3d Cir.
1990). The injunction should issue only if the plaintiff
produces evidence sufficient to convince the district
court that all four factors favor preliminary relief.
Id. at 192.
The decision whether to enter a preliminary
injunction is committed to the sound discretion of the
trial court, and will be reversed "only if the court
abused its discretion, committed an obvious error in
applying the law, or made a serious mistake in
considering the proof." Loretangeli v. Critelli, 853
F.2d 186, 193 (3d Cir. 1988). However, "[a]lthough terms
of an injunction are normally reviewed for abuse of
discretion, any determination that is a prerequisite to
the issuance of an injunction . . . is reviewed according
to the standard applicable to that particular
determination." John F. Harkins Co. v. Waldinger Corp.,
(..continued)
(B) in commercial advertising or promotion,
misrepresents the nature, characteristics,
qualities, or geographic origin of his or her or
another persons's goods, services, or commercial
activities,
shall be liable in a civil action by any person who
believes that he or she is or is likely to be damaged by
such act.
15 U.S.C.A. § 1125(a)(1) (Supp. 1994). With the Trademark Law
Revision Act of 1988, Pub. L. No. 100-667, 102 Stat. 3935,
Congress amended § 43(a) to codify existing constructions of that
section, see S. REP. No. 515, 100th Cong., 2d Sess. 40 (1988),
reprinted in 1988 U.S.C.C.A.N. 5577, 5603, so we will draw
heavily on precedent decided under the previous version of
§ 43(a).
796 F.2d 657, 658 (3d Cir. 1986), cert. denied[,] 479
U.S. 1059, 107 S. Ct. 939 (1987).
Id. at 632-33 (parallel citation omitted) (emphasis, and first
and final alterations, supplied). Thus, we exercise plenary
review over the district court's conclusions of law and its
application of the law to the facts, see Marco v. Accent
Publishing Co., 969 F.2d 1547, 1548 (3d Cir. 1992), but review
its findings of fact for clear error, see Oberti v. Board of
Educ., 995 F.2d 1204, 1220 (3d Cir. 1993), which occurs when we
are "left with a definite and firm conviction that a mistake has
been committed," Anderson v. Bessemer City, 470 U.S. 564, 573,
105 S. Ct. 1504, 1511 (1985).
II. THE APPLICABLE LAW
A. Trade Dress Law in General
"Trade dress" originally referred to the packaging or
displays associated with trademarked goods. In the leading case
of Chevron Chemical Co. v. Voluntary Purchasing Groups, Inc., 659
F.2d 695, 700-02 (5th Cir. 1981), for example, the Court of
Appeals for the Fifth Circuit held that the defendant had
unfairly competed with the plaintiff by utilizing the same design
and colors as the plaintiff for packaging its lawn and garden
products, even though the defendant prominently employed a
different brand name.
That principle of trade dress law grounded in design
protection has since been extended to the design of a product
itself. "Section 43(a) of the Lanham Act proscribes not only
trademark infringement in its narrow sense, but more generally
creates a federal cause of action for unfair competition. In
particular, § 43(a) provides a cause of action for unprivileged
imitation, including trade dress infringement [of unregistered
trade dress]." American Greetings Corp. v. Dan-Dee Imports,
Inc., 807 F.2d 1136, 1140 (3d Cir. 1986) (citations omitted).
That is, while it was once "well-settled that shapes of products
in the public domain may be freely copied," id. at 1145 (citing
cases),6 the same no longer holds true, as federal trademark law
under the Lanham Act may protect "product configurations," see,
e.g., Merchant & Evans, 963 F.2d at 633-34; cf. Aromatique, Inc.
v. Gold Seal, Inc., 28 F.3d 863, 868 (8th Cir. 1994) (per curiam)
(plurality opinion by Morris Sheppard Arnold, J.) (noting that
trade dress may now be registered on the Principal Register of
the United States Patent and Trademark Office). In Merchant &
Evans, we reaffirmed that trade dress protection extends beyond a
product's packaging or labeling to include "``the appearance of
the [product] itself.'" Merchant & Evans, 963 F.2d at 633(quoting American Greetings Corp., 807 F.2d at 1140).
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,
6
. See JAMES L. HOPKINS, THE LAW OF TRADEMARKS, TRADENAMES AND UNFAIR
COMPETITION § 47 (2d ed. 1905) ("It is obvious that if a commercial
article itself could constitute a trademark, there would be
little use for patent laws. As Judge Carpenter said, ``in the
very nature of the case . . . the trademark must be something
other than, and separate from, the merchandise.'") (quoting Davis
v. Davis, 27 F. 490, 492 (C.C. Mass. 1886)).
or even particular sales techniques." Computer Care v. Service
Sys. Enters., Inc., 982 F.2d 1063, 1067 (7th Cir. 1992) (internal
quotation marks omitted); accord International Jensen, Inc. v.
Metrosound U.S.A., Inc., 4 F.3d 819, 822-23 (9th Cir. 1993);
Woodsmith Publishing Co. v. Meredith Corp., 904 F.2d 1244, 1247
(8th Cir. 1990); Stormy Clime Ltd. v. Progroup, Inc., 809 F.2d
971, 974 (2d Cir. 1987); Ambrit, Inc. v. Kraft, Inc., 812 F.2d
1531, 1535 (11th Cir. 1986); John H. Harland Co. v. Clarke
Checks, Inc., 711 F.2d 966, 980 (11th Cir. 1983). "``Trade dress
is a complex composite of features' and ``[t]he law of unfair
competition in respect to trade dress requires that all of the
features be considered together, not separately.'" American
Greetings Corp., 807 F.2d at 1141 (quoting SK&F, Co. v. Premo
Pharmaceutical Labs., 481 F. Supp. 1184, 1187 (D.N.J. 1979),
aff'd, 625 F.2d 1055 (3d Cir. 1980)). Thus, for example, a
product configuration may be distinctive although no particular
individual element or feature would be considered distinctive in
isolation.
In this case we deal exclusively with trade dress said to
inhere in the product itself, rather than trade dress alleged in
a product's packaging. Because the legal doctrines in these two
very different situations will substantially diverge in various
incidents, we will employ the designation "product configuration"
to refer to trade dress alleged in the product itself, whether in
a specific feature or in some combination or arrangement of
features, and to distinguish that type of trade dress from
"product packaging." Cf. Two Pesos, Inc. v. Taco Cabana, Inc.,
112 S. Ct. 2753, 2760 (1992) ("[T]he 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. . . .
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.").
In Merchant & Evans, we held that in order to qualify for
trade dress protection, the plaintiff must show:
(1) that the imitated feature is non-functional, (2) that
the imitated feature has acquired a "secondary meaning,"
and (3) that consumers are likely to confuse the source
of the plaintiff's product with that of the defendant's
product.
Merchant & Evans, 963 F.2d at 633 (citing American Home Prods.
Corp. v. Barr Labs., Inc., 834 F.2d 368, 370 (3d Cir. 1987));
accord American Greetings Corp., 807 F.2d at 1141; Standard Terry
Mills, Inc. v. Shen Mfg. Co., 803 F.2d 778, 780 (3d Cir. 1986).
The intervening decision in Two Pesos, Inc. v. Taco Cabana, Inc.,
112 S. Ct. 2753, 2758 (1992), has, however, overruled one aspect
of that formulation, eliminating the need for the plaintiff to
prove secondary meaning in order to receive protection for
"inherently distinctive" trade dress. See Two Pesos, 112 S. Ct.
at 2760. Hence a plaintiff proceeding under section 43(a) must
now only prove that (i) the trade dress is distinctive, either
because it is inherently distinctive or because it has acquired
distinctiveness; (ii) the trade dress is nonfunctional; and (iii)
the defendant's use of plaintiff's trade dress is likely to cause
consumer confusion. See id.As just stated, the Supreme Court in Two Pesos used
"distinctive" in a dual sense, meaning either inherently
distinctive or having acquired distinctiveness through secondary
meaning. See RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 13 (Tent.
Draft No. 2, Mar. 23, 1990),7 cited in Two Pesos, 112 S. Ct. at
2758. Because the Supreme Court in Two Pesos did not decide the
question whether trade dress, and in particular trade dress in a
product configuration, can actually ever be considered inherently
distinctive -- for purposes of that case, the Court assumed that
the restaurant decor at issue was so -- we must first embark on a
journey to delineate when, if ever, product configurations should
be deemed inherently distinctive.
7
. Although the American Law Institute adopted the entire
Restatement of the Law of Unfair Competition in May 1993, the
final version is not yet available, and hence we will cite herein
to the second Tentative Draft.
B.The Problems With The Trademark Taxonomy
Duraco argues that the design of its Grecian Classics
planters is inherently distinctive because it is "suggestive."
Duraco borrows the term "suggestive" from trademark law, as
trademarks have long been classified according to whether they
are generic, descriptive, suggestive, arbitrary, or fanciful.
See Two Pesos, 112 S. Ct. at 2757 (citing Abercrombie & Fitch Co.
v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976) (Friendly,
J.)). In trademark law, marks belonging to the latter three
categories of the taxonomy -- suggestive, arbitrary, or fanciful
-- are deemed inherently distinctive and are automatically
entitled to protection. See id.; Fisons Horticulture, Inc. v.
Vigoro Indus., Inc., 30 F.3d 466, 478 (3d Cir. 1994); A.J.
Canfield Co. v. Honickman, 808 F.2d 291, 296-97 (3d Cir. 1986).
Marks falling within the first category -- generic marks -- are
never subject to trademark protection, because to tolerate their
monopolization would preclude competitors from accurately and
efficiently describing their products and hence unduly hobble
them in competition. See Two Pesos, 112 S. Ct. at 2757; Kellogg
Co. v. National Biscuit Co., 305 U.S. 111, 116-19, 59 S. Ct. 109,
112-14 (1938); Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169,
186, 16 S. Ct. 1002, 1008 (1896). The marks falling within the
remaining category -- descriptive -- acquire distinctiveness only
if they come to identify and distinguish the producer's goods,
i.e., if they acquire secondary meaning. See 15 U.S.C.A.
§§ 1052(e)-(f), 1127 (Supp. 1994); Two Pesos, 112 S. Ct. at 2757.
To have acquired secondary meaning, "in the minds of the public,
the primary significance of a product feature or term [must be]
to identify the source of the product rather than the product
itself." Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844,
851 n.11, 102 S. Ct. 2182, 2187 n.11 (1982) (dicta).
Thus, Duraco seeks to latch onto the suggestive trademark
category to avoid having to demonstrate secondary meaning. Some
courts have nonchalantly applied the trademark
generic/descriptive/suggestive/arbitrary/fanciful taxonomy in the
product configuration context (though none of them has inquired
whether it makes sense to do so), see, e.g., Braun, Inc. v.
Dynamics Corp. of America, 975 F.2d 815, 825 n.18 (Fed. Cir.
1992) (design of a blender); cf. Paddington, 996 F.2d at 583
(product packaging); Computer Care, 982 F.2d at 1069 (same);
Ambrit, Inc., 812 F.2d at 1537 (same), and both parties here
assume that it provides the proper framework for our analysis,
see Br. of Appellant at 22-32; Br. of Appellee at 22-30; Reply
Br. of Appellant at 2-12. But we do not think it helpful or
proper to transplant the categorical distinctiveness inquiry
developed for trademarks to product configurations, where the
alleged trade dress lies in the very product itself. See Martin
P. Hoffman, Trade Dress/Product Simulation Overview, C913 ALI-ABA
219, 222 (1994) ("The [trademark distinctiveness] categories do
not fit trade dress considerations very well . . ..").
The difficulty is that, perhaps unlike product packaging,
a product configuration differs fundamentally from a product's
trademark, insofar as it is not a symbol according to which one
can relate the signifier (the trademark, or perhaps the
packaging) to the signified (the product). Being constitutive of
the product itself and thus having no such dialectical
relationship to the product, the product's configuration cannot
be said to be "suggestive" or "descriptive" of the product, or
"arbitrary" or "fanciful" in relation to it. See Jay Dratler,
Jr., Trademark Protection for Industrial Design, 1988 U. ILL. L.
REV. 887, 903 ("Unlike verbal marks, industrial designs do not
describe anything; they ``just are.'"); Ralph S. Brown, Design
Protection: An Overview, 34 U.C.L.A. L. REV. 1337, 1380 (1987)
(same); Melissa R. Gleiberman, Note, From Fast Food to Fast Cars:
Overbroad Protection of Product Trade Dress Under Section 43(a)
of the Lanham Act, 45 STAN. L. REV. 2037, 2042-43 (1993)
[hereinafter Gleiberman, Note, Overbroad Protection of Product
Trade Dress] (same); cf. WILLIAM H. BROWNE, A TREATISE ON THE LAW OF
TRADE-MARKS § 130, at 87 (1873) ("A trademark is nothing more nor
less than one's commercial signature to his goods; and the mark
and the goods bear the same relation to one another as do the
positive and the negative forces of electricity to each other;
and in their opposition they mutually uphold and sustain."). The
very basis for the trademark taxonomy -- the descriptive
relationship between the mark and the product, along with the
degree to which the mark describes the product -- is unsuited for
application to the product itself.
Moreover, insofar as consumer motivation to purchase a
product will much more likely be predicated on an appreciation of
a product's features than on an appreciation of a product's name,
assuming no secondary meaning attached to either, one cannot
automatically conclude from a product feature or configuration --
as one can from a product's arbitrary name, for example -- that,
to a consumer, it functions primarily to denote the product's
source. Cf. RESTATEMENT (THIRD) OF UNFAIR COMPETITION, § 16 cmt. b
(Tent. Draft No. 2, Mar. 23, 1990) ("[I]t is less common for
consumers to recognize the design of a product as an indication
of source."). As Judge Nies wrote, concurring in In re DC
Comics, Inc., 689 F.2d 1042, 1050-51 (C.C.P.A. 1982):
There are different considerations where one seeks
protection of a product design itself, and I have found
no precedent in decisions of this court, or others, which
recognizes the protectability of any product design as a
trademark for that product without proof of
distinctiveness, that is, distinctiveness as an
indication of origin, not simply that it is a distinctive
design in the sense of being unusual. The semantics, in
referring to a design as "distinctive," impedes clarity
in analysis.. . . Descriptive designations are not
presumed to function as indications of origin immediately
upon first use, unlike arbitrary word marks or arbitrary
logo designs, but rather must be used from some period of
time before acquiring the status of a trademark.
Thus, a fanciful or arbitrary mark, having had no
established meaning prior to its adoption as a trademark and
serving no apparent purpose other than to identify (signify) the
source, is legally presumed to achieve customer recognition and
association immediately upon its adoption and use. In contrast,
a product configuration can not generally give rise to a similar
presumption, as consumers usually appreciate a product's
configuration for its contribution to the inherent appeal of the
product, not (in the absence of secondary meaning) its signifying
function. If one felt compelled to apply the trademark taxonomy,
one could at best say that a product configuration is descriptive
of (because identical with) the product itself. This case
illustrates the point rather clearly: whether or not the Grecian
Classics are "suggestive" of a marble construction or anything
else, we think it quite improbable that a consumer upon seeing
Joy's plastic planter in a store would reasonably associate its
specific configuration with a particular source, even if the
consumer had repeatedly before seen a Duraco plastic planter.
Accordingly, for all the aforementioned considerations,
we conclude that the trademark taxonomy, carefully and precisely
crafted through a long succession of cases to accommodate the
particularities of trademarks, does not fit the quite different
considerations applicable to product configurations.8 See Hanig
& Co. v. Fisher & Co., No. 92-C-1779, 1994 WL 97758, at *4 (N.D.
Ill. Mar. 24, 1994); Martin P. Hoffman, Trade Dress/Product
Simulation Overview, C913 ALI-ABA at 222.
Although Two Pesos made extensive reference to the
discrete trademark categories, that decision does not foreclose
our refusal to embrace the trademark distinctiveness taxonomy in
product configuration cases. In Two Pesos the Supreme Court
specifically stated that the sole issue before it was whether
secondary meaning must be proven for an inherently distinctive
trade dress vel non, see 112 S. Ct. at 2757 & n.6, and hence the
applicability of the Abercrombie & Fitch classifications to trade
dress was not at issue, see Paddington, 996 F.2d at 583.
8
. We do not suggest that the same taxonomy might not be
efficacious in the context of product packaging.
Moreover, Two Pesos dealt with a restaurant's decor, more akin to
product packaging than product configuration.
Of course, the rationales supporting the trademark
distinctiveness taxonomy may sometimes be fruitfully applied to
trade dress when speaking of the product itself. For example,
consider the trademark distinctiveness inquiry. What is
"generic" in trademark law is a word with so few alternatives
(perhaps none) for describing the good that to allow someone to
monopolize the word would debilitate competitors. A descriptive
trademark is one that leaves a larger but finite set of
equivalent alternatives, and therefore still can be protected
(because there are adequate alternatives for competitors) but
only if it has acquired secondary meaning (so that it
demonstrably functions as a source indicium). Finally, the
suggestive, arbitrary, or fanciful mark is entitled to automatic
protection, as there exists a vast universe of equivalent
alternatives (or, in the case of a suggestive mark, at least a
vast number of passable alternatives) to choose from, and the
consumer will reasonably immediately identify the mark for what
it is -- a source indicium and no more.
As noted supra at typescript Error! Bookmark not
defined., a plaintiff alleging trade dress infringement must
prove that the dress is non-functional.9 In trade dress law, the
9
. Although various forms of the inquiry have been
articulated, the essence of 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
inquiry into functionality resembles the genericness inquiry in
trademark law; the two doctrines share essentially the same
underlying rationale, preserving competition. But cf. Dratler,
Trademark Protection for Industrial Designs, 1988 U. ILL. L. REV.
at 951-52 (arguing that the genericness doctrine and the
functionality doctrine -- in form substantially narrower than
this Circuit has adopted, see supra at n.Error! Bookmark not
defined. -- serve different purposes). Thus, just as generic
trademarks may be copied freely, functional trade dress may also
be copied freely -- because both are important for preserving
effective competition. Similarly, just as descriptive
trademarks, which are neither generic nor inherently distinctive,
may be protected upon proof of secondary meaning, trade dress
that is not functional (and thus leaves a satisfactory number of
competitively viable alternatives, see Merchant & Evans, 963 F.2d
at 634-35 & n.4) but not inherently distinctive (and thus not a
presumptive source indicium) may be protected, but only if
secondary meaning is shown, see supra at typescript Error!
Bookmark not defined.. Finally, just as inherently distinctive
trademarks are protected because presumptively they identify the
(..continued)
is the identification of the provider.. . . Several
courts have noted that the key policy served by
barring the use of functional features for
identification is the policy favoring competition,
and that the "functionality" inquiry must be
addressed in light of this policy.
United States Golf Ass'n v. St. Andrews Sys., 749 F.2d 1028,
1033-34 (3d Cir. 1984) (footnote and citations omitted), quoted
in Merchant & Evans, 963 F.2d at 634.
product's source, inherently distinctive trade dress is protected
because presumptively it primarily identifies the product's
source.
C. Distinctiveness in the Law of Unfair Competition
Having rejected the transplantation of the trademark
distinctiveness categories to product configurations, the next
question we must address is whether a product configuration can
ever be inherently distinctive. Before the Supreme Court's
decisions in Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225,
84 S. Ct. 784 (1964), and Compco Corp. v. Day-Brite Lighting,
Inc., 376 U.S. 234, 84 S. Ct. 779 (1964), unfair competition law
was essentially state law. Sears and Compco created a federal
unfair competition law. See Two Pesos, 112 S. Ct. at 2763(Stevens, J., concurring in the judgment) ("``Section 43(a) . . .
has been widely interpreted to create, in essence, a federal law
of unfair competition.'") (quoting The United States Trademark
Ass'n Trademark Rev. Comm'n Report and Recommendations to USTA
President and Board of Directors, 77 TRADEMARK RPTR. 375, 426
(1987)); American Greetings Corp. 807 F.2d at 1140 ("Section
43(a) . . . creates a federal cause of action for unfair
competition."); Kohler Co. v. Moen, Inc., 12 F.3d 632, 646 (7th
Cir. 1993) (Cudahy, J., dissenting) ("[T]he Lanham Act
(comprising the federal law of trademarks and unfair competition)
essentially federalizes the common law of trademarks and unfair
competition."); id. at 647; cf. Kohler Co., 12 F.3d at 640 n.10
(recognizing relationship between Lanham Act and state common law
of unfair competition but emphasizing that they are not
identical). Congress approved that development in the 1988
amendments to the Lanham Act. See Two Pesos, 112 S. Ct. at 2765(Stevens, J., concurring in the judgment) ("Congress codified the
judicial interpretation of § 43(a), giving its imprimatur to a
growing body of case law . . .."); Kohler Co., 12 F.3d at 636("[The 1988 Lanham Act amendments] as a codification of prior
case law . . . validate the uniform preamendment interpretation
of § 45 [of] the Act."); S. REP. No. 515, 100th Cong., 2d Sess.
40 (1988), reprinted in 1988 U.S.C.C.A.N. 5577, 5603. Thus, it
will be instructive to commence our inquiry with a survey of the
common law tort of unfair competition.
1. State Unfair Competition Law
Under state unfair competition law, a product
configuration could obtain protection from copying only if it
first had acquired secondary meaning. See, e.g., Gum, Inc. v.
Gumakers of America, Inc., 136 F.2d 957, 958 (3d Cir. 1943);
American Fork & Hoe Co. v. Stampit Corp., 125 F.2d 472, 474 (6th
Cir. 1942); Lewis v. Vendome Bags, Inc., 108 F.2d 16, 18 (2d Cir.
1939); Sinko v. Snow-Craggs Corp., 105 F.2d 450, 452 (7th Cir.
1939); Crescent Tool Co. v. Kilborn & Bishop Co., 247 F. 299, 300
(2d Cir. 1917); Rathbone, Sard & Co. v. Chamption Steel Range
Co., 189 F. 26, 30-32 (6th Cir. 1911); 1 HARRY D. NIMS, THE LAW OF
UNFAIR COMPETITION AND TRADE-MARKS § 134(a), at 370, 378-79 (4th ed.
1947) [hereinafter NIMS, LAW OF UNFAIR COMPETITION]; see also Two
Pesos, 112 S. Ct. at 2762 (Stevens, J., concurring in the
judgment); Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489
U.S. 141, 158, 109 S. Ct. 971, 981 (1989); 1 J. THOMAS MCCARTHY,
TRADEMARKS AND UNFAIR COMPETITION § 7:23, at 227, § 8:2, at 285 (2d ed.
1984). The concept of an inherently distinctive product
configuration was, in other words, alien to the common law.
Secondary meaning in the product configuration context
was then, as it is now, defined to "attach[] to a given shape or
form of article when that form is associated in the minds of
prospective customers with the source from which the article came
to such an extent that demand for the particular article depends
upon the business reputation or standing of its maker." American
Fork & Hoe, 125 F.2d at 475; see Kellogg Co., 305 U.S. at 118,
120, 59 S. Ct. at 113-14 (explaining that secondary meaning has
not been established when the form of the article, in the minds
of the public, is primarily associated with the article rather
than a particular producer); supra at typescript 22 (quoting
Inwood Labs.). The Court of Appeals for the Seventh Circuit
succinctly expounded the persuasive rationale for this doctrine
in Sinko, which involved the defendant's copying of plaintiff's
successful knobs for automobile steering wheel spinners:
Sinko created a desire on the part of the public for one
of two things, either for knobs made by Sinko, above all
other knob makers, or for knobs made in a particular
manner regardless of who made them. If it is the first
situation, the law of unfair competition gives Sinko the
right to monopolize or to exclude other makers from
copying the product. If it is the latter situation,
Sinko receives no such right to monopolize, even though
he might have been the first one to make the article in
the particularly desirable manner.
Sinko, 105 F.2d at 453; accord 1 NIMS, LAW OF UNFAIR COMPETITION
§ 134, at 373 (citing Diamond Expansion Bolt Co. v. U.S.
Expansion Bolt Co., 164 N.Y.S. 433 (App. Div. 1917)). Similarly,
then-District Judge Learned Hand, sitting by designation, wrote
for the Second Circuit:
The cases of so-called "nonfunctional" unfair competition
. . . are only instances of the doctrine of "secondary
meaning." All of them presuppose that the appearance of
the article, like its descriptive title in true cases of
"secondary" meaning, has become associated in the public
mind with the first comer as manufacturer or source, and,
if a second comer imitates the article exactly, that the
public will believe his goods have come from the first,
and will buy, in part, at least, because of that
deception. Therefore it is apparent that it is an
absolute condition to any relief whatever that the
plaintiff in such cases show that the appearance of his
wares has in fact come to mean that some particular
person -- the plaintiff may not be individually known --
makes them, and that the public cares who does make them,
and not merely for their appearance and structure. It
will not be enough only to show how pleasing they are,
because all the features of beauty or utility which
commend them to the public are by hypothesis already in
the public domain. The defendant has as much right to
copy the "nonfunctional" features of the article as any
others, so long as they have not become associated with
the plaintiff as manufacturer or source. The critical
question of fact at the outset always is whether the
public is moved in any degree to buy the article because
of its source and what are the features by which it
distinguishes that source.
Crescent Tool Co., 247 F. at 300 (emphasis supplied).
Finally, Chief Justice Holmes, then sitting on the
Supreme Judicial Court of Massachusetts, also explained the
irreproachable rationale sustaining the prerequisite of secondary
meaning before affording protection to product configurations:
In the absence of a patent the freedom of manufacture
cannot be cut down under the name of preventing unfair
competition. All that can be asked is that precautions
shall be taken, so far as are consistent with the
defendant's fundamental right to make and sell what it
chooses, to prevent . . . deception . . ..
It is true that a defendant's freedom of action with
regard to some subsidiary matter of ornament or label may
be restrained, although a right of the same nature with
its freedom to determine the shape of the articles which
it sells.. . . [T]he instrument sold is made as it is
[by defendant], partly at least, because of a supposed or
established desire of the public for instruments in that
form. The defendant has the right to get the benefit of
that desire even if created by the plaintiff. The only
thing it has not the right to steal is the good will
attaching to the plaintiff's personality, the benefit of
the public's desire to have goods made by the
plaintiff.. . . [T]he plaintiff's right can be protected
sufficiently by requiring the defendant's [products] to
be clearly marked so as to indicate unmistakably that
they are the defendant's and not the plaintiff's
goods.. . . To go further is to save the plaintiff from a
competition from which it has no right to be exempt.
Flagg Mfg. Co. v. Holway, 59 N.E. 667, 667 (Mass. 1901)
(citations omitted).
Thus, traditional unfair competition law would not
mandate a copier to take positive steps to avoid confusion unless
"the existence of secondary meaning . . . plainly appear[ed]."
American Fork & Hoe, 125 F.2d at 475. If a product feature had
obtained secondary meaning, but was functional, all a defendant
had to do, to avoid competing unfairly, was to "use reasonable
care to inform the public of the source of its product." Gum,
Inc., 136 F.2d at 960 (citing Kellogg Co., 305 U.S. at 120, 59 S.
Ct. at 114); see Vaughan Novelty Mfg. Co. v. G.G. Greene Mfg.
Corp., 202 F.2d 172, 176 & n.11 (3d Cir.) (citing RESTATEMENT OF
TORTS § 741, cmt. j (1938)), cert. denied, 346 U.S. 820, 74 S.
Ct. 34 (1953); American Fork & Hoe, 125 F.2d at 475; Crescent
Tool Co., 247 F. at 301; 1 NIMS, LAW OF UNFAIR COMPETITION § 134, at
371; cf. J.C. Penney Co. v. H.D. Lee Mercantile Co., 120 F.2d
949, 955-56 (8th Cir. 1941). This latter doctrine survives
intact today. See American Greetings Corp., 807 F.2d at 1141("When a feature or combination of features is found to be
functional, it may be copied and the imitator may not be enjoined
from using it . . .. Nevertheless, if the functional feature or
combination is also found to have acquired secondary meaning, the
imitator may be required to take reasonable steps to minimize the
risk of source confusion.") (citations omitted); id. at 1144-45 &
n.4. A defendant could be completely barred from copying a
product configuration only if the configuration both was
nonfunctional and had acquired secondary meaning.
In short, the common law did not find any "unfairness,"
as concerns the law, in someone's copying a design -- even if it
was originally produced through great expenditures of labor,
effort, talent, and capital -- if the design was unprotected by
patent or copyright. See, e.g., Zangerle & Peterson Co. v.
Venice Furniture Novelty Mfg. Co., 133 F.2d 266, 269 (7th Cir.
1943). What the courts of equity condemned was not bare-knuckled
competition, but fraud and deceit, which are worked when one
"palms off" one's goods as those of another, see, e.g., Zangerle
& Peterson, 133 F.2d at 269-70; J.C. Penney, 120 F.2d at 953-54;
Lewis, 108 F.2d at 18; Sinko, 105 F.2d at 452; Rathbone, Sard &
Co., 189 F. at 30-31; EDWARD S. ROGERS, GOOD WILL, TRADE-MARKS, AND
UNFAIR TRADING 212 (1914); cf. 1 NIMS, LAW OF UNFAIR COMPETITION § 134,
at 374 ("The fact that the defendant may have deliberately copied
the appearance of the plaintiff's goods and that in doing so may
have gained an advantage, is not enough. The imitating must have
been done with the expectation of obtaining some unfair
advantage."); see also Two Pesos, 112 S. Ct. at 2762 & n.5
(Stevens, J., concurring in the judgment); Bonito Boats, 489 U.S.
at 157, 109 S. Ct. at 981; that is, when one deceives the
consuming public and misappropriates -- trades upon -- the good
will of another. Exploiting the "goodwill of the article,"
Kellogg Co., 305 U.S. at 121, 59 S. Ct. at 115 -- the attractive
features, of whatever nature, that the product holds for
consumers -- is robust competition; only deceiving consumers, or
exploiting the good will of another producer, is unfair
competition.
2. Precedent Under Section 43(a)
Besides having no foothold in the common law, recognizing
the existence of inherently distinctive product configurations is
arguably inconsistent with precedent in this Circuit. As we have
mentioned, in Merchant & Evans we held that a feature of the
product itself qualifies for trade dress protection only if the
plaintiff proves that the imitated feature is nonfunctional, that
it has acquired secondary meaning, and that consumers are likely
to confuse the source of the plaintiff's products with that of
the defendant's. Merchant & Evans, 963 F.2d at 633. This might
be read as an implied holding that trade dress in the product
itself can never be inherently distinctive. But the panel did
not advance this proposition in Merchant & Evans, and, especially
given the Supreme Court's intimations in the intervening Two
Pesos decision, we do not read Merchant & Evans in that fashion.
As already stated, Two Pesos poses a problem with
adhering to Merchant & Evans insofar as the Supreme Court's
decision eliminated the secondary meaning prong for inherently
distinctive trade dress. Of course, Two Pesos only answered the
question "whether trade dress which is inherently distinctive is
protectable under § 43(a) without a showing that it has acquired
secondary meaning," 112 S. Ct. at 2757 (emphasis supplied); it
did not define what makes trade dress inherently distinctive and,
more importantly for our purposes, did not decide whether a
product configuration could ever be inherently distinctive, cf.
Kohler Co., 12 F.3d at 641 n.11 (dicta) ("[A] product's shape is
never inherently distinctive."). And Two Pesos, which dealt with
the decor of a Mexican restaurant, is a product packaging, not a
product configuration, case. See 112 S. Ct. at 2755 & n.1. See
also RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 16 cmt. b (Tent. Draft
No. 2, Mar. 23, 1990) ("Product designs are . . . not considered
inherently distinctive; such designs are protectable only upon
proof of secondary meaning."); MCCARTHY, TRADEMARKS AND UNFAIR
COMPETITION § 7.31 n.1 (citing conflicting sources).
Nevertheless, we do read Two Pesos as giving an
imprimatur to finding trade dress in a product configuration to
be inherently distinctive under certain narrow circumstances.
Cf. id. at 2759 (not distinguishing among "a verbal or symbolic
mark or the features of a product design"); id. at 2760
(discussing protectability of "design[s]" and "shape[s]"). The
Supreme Court provided two strong competition-based rationales
why at least some trade dress should be deemed inherently
distinctive.
First, the Court noted that protection of trade dress
along with trademarks could further the Lanham Act's purpose to
"``secure to the owner of the mark [or dress] the goodwill of his
business and to protect the ability of consumers to distinguish
among competing producers.'" Two Pesos, 112 S. Ct. at 2760(quoting Park 'N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S.
189, 198, 105 S. Ct. 658, 663 (1985)). "By making more difficult
the identification of a producer with its product," the Court
explained, "a secondary meaning requirement for a non-descriptive
trade dress would hinder improving or maintaining the producer's
competitive position." Id. We think that such an overly
rigorous uniform requirement for product configurations would
have a similar deleterious effect.
Second, the Court reasoned that always requiring
secondary meaning would not protect the developer of a "fanciful"
or "arbitrary" trade dress from "theft" while the developer tries
to acquire secondary meaning for its trade dress. See id. at
2758-59; cf. Keene Corp. v. Paraflex Indus., Inc., 653 F.2d 822,
825 (3d Cir. 1981). In particular, the Court was concerned about
the "anticompetitive effects [of] particular burdens on the
start-up of small companies." Two Pesos, 112 S. Ct. at 2761.
Always requiring secondary meaning would burden fledgling
companies seeking to expand into new markets because established
competitors could "appropriate the originator's [inherently
distinctive nonfunctional trade] dress in other markets and . . .
deter the originator from expanding into and competing in these
areas." Id. This rationale also would seem to apply whether the
trade dress is alleged in a product packaging or a product
configuration.
Of course, it is not the purpose of unfair competition
law, under the guise of either consumer protection or the
protection of business good will, to implement a policy of
encouraging innovative designs by protecting them once
designed.10 See Gleiberman, Note, Overbroad Protection of
Product Trade Dress, 45 STAN. L. REV. at 2056-57; cf. Dratler,
Trademark Protection for Industrial Designs, 1988 U. ILL. L. REV.
at 909 ("[F]ostering innovation is only a minor and incidental
purpose of trademark protection."). Those issues are the
province of copyright and patent laws. Moreover, design
protection laws (which have repeatedly been introduced in
Congress during virtually every session since 1917) have not once
been enacted. See In re Nalbandian, 661 F.2d 1214, 1218-19 & n.1
(C.C.P.A. 1981) (Rich, J., concurring) (recounting the history of
efforts to pass design protection legislation); Esquire, Inc. v.
Ringer, 591 F.2d 796, 800 n.12 (D.C. Cir. 1978) (observing that
since 1914 none of the approximately 70 design protection bills
introduced in Congress had passed); Brown, Design Protection: An
Overview, 34 U.C.L.A. L. REV. at 1395 ("Beginning in 1957, a
[design protection] bill has been introduced in probably every
Congress . . .."); Dratler, Trademark Protection for Industrial
Designs, 1988 U. ILL. L. REV. at 888 & n.4, 904 & n.94 (stating
10
. The two principal purposes of the trademark statute are
to avoid consumer confusion and to protect a trademark owner,
which has invested "energy, time, and money in presenting to the
public the product, . . . from [the trademark's] misappropriation
by pirates and cheats." S. REP. No. 1333, 79th Cong., 2d Sess. 3
(1946), reprinted in 1946 U.S. Code Cong. Serv. 1274, 1274; see
S. REP. No. 515, 100th Cong., 2d Sess. 4 (1988), reprinted in
1988 U.S.C.C.A.N. 5577, 5605 (1988 amendment); Park 'N Fly, Inc.,
469 U.S. at 198, 105 S. Ct. at 663; Inwood Labs., 456 U.S. at 854
n.14, 102 S. Ct. at 2188 n.14; see also 15 U.S.C.A. § 1127 (Supp.
1994) (identifying five purposes of the amended Lanham Act).
that the history of the effort to have Congress enact industrial
design legislation takes up 160 pages in a Copyright office
bibliography, and that between 1914 and 1945 at least 45 such
bills were introduced in Congress); A. Samuel Oddi, The Functions
of "Functionality" in Trademark Law, 22 HOUS. L. REV. 925, 951 &
n.147 (1985); Gleiberman, Note, Overbroad Protection of Product
Trade Dress, 45 STAN. L. REV. at 2070 & nn. 251-52; cf. Bonito
Boats, 489 U.S. at 167-68, 109 S. Ct. at 986 ("It is for Congress
to determine if the present system of design and utility patents
is ineffectual in promoting the useful arts in the context of
industrial design.").
Under the laws that are on the books, Congress has
repeatedly chosen not to protect designs unless they meet certain
strict requirements, catalogued in Merchant & Evans, 963 F.2d at
638-40; see also Dratler, Trademark Protection for Industrial
Designs, 1988 U. ILL L. REV. at 923-35; Gleiberman, Note,
Overbroad Protection of Product Trade Dress, 45 STAN. L. REV. at
2055-65, and then Congress has only given them protection of
circumscribed duration, cf. U.S. CONST. art. I, § 8, cl. 8
(authorizing Congress to grant patents of limited duration). We
believe that courts should exercise restraint so as not to
undermine Congress's repeated determinations not to afford
virtually perpetual protection to product configurations with an
expansive construction of section 43(a). What Congress has, for
the great span of this century, been unwilling to do, see supra
at n.Error! Bookmark not defined., should not be effected by the
judiciary.
Thus Duraco's suggestion, based on its reading of
Paddington, 996 F.2d at 582-83, that the capacity of the
product's configuration to distinguish the plaintiff's goods from
others suffices to establish inherent distinctiveness, is grossly
overinclusive. It is also circular: clearly any perceptible
product feature or combination or arrangement of features can
distinguish goods, and perhaps is likely to do so if, as a rule,
nobody else were allowed to copy it.11 That is, provided that no
one besides the originator is allowed to use a particular
feature, it would be difficult to conjure up any perceptible
feature that users can train upon that is not capable of
distinguishing the originator's goods from those of others. For
11
. In Paddington, an importer of the anise liqueur ouzo
under the label "No. 12 Ouzo" brought a trademark and trade dress
infringement suit against a rival ouzo importer using the label
"#1 Ouzo." The importers' bottle designs, labeling, and gift
boxes were strikingly similar in appearance, containing similar
design elements and "using identical shades of red, white and
black." Id. at 586. The court of appeals concluded that
[t]he No. 12 Ouzo bottle is inherently distinctive.. . .
There is nothing descriptive about the bottle and label
design that conveys anything about its particular
contents, except for the use of the trademark "No. 12
Ouzo," . . . and the fact that the bottle . . . indicates
to the observer that it contains a liquid that probably
is potable. The tone and layout of the colors, the style
and size of the lettering, and, most important, the
overall appearance of the bottle's labeling, are
undeniably arbitrary. They were selected from an almost
limitless supply of patterns, colors and designs.
Id. at 584 (emphasis supplied). Therefore, a secondary meaning
inquiry was unnecessary, id., and after reversing the district
court by finding a likelihood of confusion, the court reinstated
the trade dress claim that the district court had dismissed. Id.
at 588.
example, even the basic design of a light bulb is "capable of
identifying a particular source of the product," Paddington, 996
F.2d at 582-83, assuming that only one manufacturer produces the
basic design, a fact which would be assured, of course, if the
design were protected against copying.
Duraco's proposal to treat any product feature or
configuration as inherently distinctive if it were merely capable
of identifying the source of the product would therefore
eviscerate the requirement for showing secondary meaning. Cf.
Turtle Wax, Inc. v. First Brands Corp., 781 F. Supp. 1314, 1321
(N.D. Ill. 1991) ("Presumably, it could be said about the trade
dress of any new product that no competitive product combines
precisely the same elements in its trade dress.. . . However,
that fact alone does not make the product's trade dress
inherently distinctive. Any other rule essentially would require
a finding of inherent distinctiveness whenever a new product
enters the market."). This is so even though the design is not
at all deserving of such protection because, leaving aside the
question of functionality, a consumer seeing another good
incorporating the same design feature or features would not
reasonably believe the first manufacturer to be its source.
Moreover, contrary to Duraco's understanding, Paddington
did not read Two Pesos as establishing the "capable of
identifying" standard for inherent distinctiveness. In the Two
Pesos passages cited in Paddington, the Supreme Court was simply
establishing that inherently distinctive trade dress need not
acquire secondary meaning before obtaining protection under the
Lanham Act. Thus, the Supreme Court stated that no secondary
meaning would be required for "inherently distinctive trade dress
. . . capable of identifying a producer's product." 112 S. Ct.
at 2760 (emphasis supplied). That statement explains what is
necessary, but not what is sufficient, to make trade dress
inherently distinctive. Paddington, alert to this qualification,
simply held that a feature's capacity to distinguish the goods is
a prerequisite to trademark protection, not a sufficient
condition. See 996 F.2d at 582-83. Indeed, the Court of Appeals
for the Second Circuit in Paddington -- a product packaging case
-- went further and distinguished between merely descriptive
trade dress, for which the plaintiff had to prove secondary
meaning, and suggestive, fanciful, or arbitrary trade dress, for
which no secondary meaning was required. See 996 F.2d at 583;
see also Nancy D. Chapman, Trade Dress Protection in the United
States After the Supreme Court Decision in Two Pesos, 387 PLI/PAT
7, 13-16, 40-42 (1994) [hereinafter Chapman, Trade Dress
Protection] (criticizing the "capable of identifying" standard).
In any event, the analysis appropriate for a product's
packaging, at issue in Paddington, is not necessarily appropriate
for a product's configuration. Product packaging designs, like
trademarks, often share membership in a practically inexhaustible
set of distinct but approximately equivalent variations, and an
exclusive right to a particular overall presentation generally
does not substantially hinder competition in the packaged good,
the item in which a consumer has a basic interest. A product
configuration, contrariwise, commonly has finite competitive
variations that, on the whole, are equally acceptable to
consumers. See RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 16 cmt. b
(Tent. Draft No. 2, March 23, 1990) (contrasting product
configurations and product packagings based on the availability
of alternatives). Moreover, because of consumers' common
abundant experience with similar goods being sold in differing
packaging, a consumer is substantially more likely to trust a
product's packaging, rather than its configuration, as an
indicium of source. Accordingly, we reject the misreading of
Paddington advanced by Duraco.
It is not ipso facto "unfair competition," we believe,
for one boldly to copy a competitor's product; it is only "unfair
competition" to trade off another's good will and in the process
dupe consumers into mistaking one's products for another's. A
proper approach to inherent distinctiveness must distinguish
between nonfunctional but desirable designs -- which, absent
secondary meaning, unfair competition law has no interest in
precluding others from copying -- and nonfunctional designs
representing to consumers the source of the goods -- which unfair
competition law does and should forbid others from copying.
3. The Standard for Inherent Distinctiveness of
Trade Dress in Product Configurations
Synthesizing the principles explored in the preceding
sections, we think that there is a proper set of circumstances
for treating a product configuration as inherently distinctive.
These circumstances are characterized by a high probability that
a product configuration serves a virtually exclusively
identifying function for consumers -- where the concerns over
"theft" of an identifying feature or combination or arrangement
of features and the cost to an enterprise of gaining and proving
secondary meaning outweigh concerns over inhibiting competition,
and where consumers are especially likely to perceive a
connection between the product's configuration and its source.
In particular, we think that, to be inherently distinctive, a
product configuration -- comprising a product feature or some
particular combination or arrangement of product features -- for
which Lanham Act protection is sought must be (i) unusual and
memorable; (ii) conceptually separable from the product; and
(iii) likely to serve primarily as a designator of origin of the
product.
For a product configuration to have the capacity to
distinguish goods in a consumer's mind -- the first prerequisite
for inherent distinctiveness -- it must be unusual and memorable.
It must partake of a unique, individualized appearance, so that a
consumer informed of all the options available in the market
could reasonably rely on it to identify a source. See Computer
Care, 982 F.2d at 1069; Hoffman, Trade Dress/Product Simulation
Overview, C913 ALI-ABA at 222 (asserting that trade dress is
inherently distinctive only if "so unique, . . . in a particular
market, that one can assume, without proof, that it will
automatically be perceived by customer[s] as an indicia [sic] of
origin -- a trademark") (omission in original) (citing MCCARTHY,
TRADEMARKS AND UNFAIR COMPETITION and Ambrit, Inc. v. Kraft, Inc., 805
F.2d 974, opinion superseded by 812 F.2d 1531 (11th Cir. 1986)).
"Manifestly, if the plaintiff's trade dress is not sufficiently
distinctive to allow consumers to identify the [source] from the
trade dress, then the dress does not inherently serve as an
indication of origin . . .." Ambrit, Inc., 812 F.2d at 1536,
quoted in Nexxus Prods. Co. v. Bertle Concepts, Inc., 28
U.S.P.Q.2d 1257, 1266 (M.D. Fla. 1993).
Moreover, unless the trade dress is memorable -- that is,
striking or unusual in appearance, or prominently displayed on
the product packaging, or otherwise somehow apt to be impressed
upon the minds of consumers, so that it is likely to be actually
and distinctly remembered -- it cannot serve as a designator of
origin. See Stuart Hall Co. v. Ampad Corp., 31 U.S.P.Q.2d 1468,
1470 (W.D. Mo. 1994); id. at 1471 ("The trade dress must be
remembered before it can be confusing."); cf. Ambrit, Inc., 812
F.2d at 1536 (setting forth criterion to measure
distinctiveness); Computer Care, 982 F.2d at 1069 (holding that
sales brochures are inherently distinctive if consumers can
identify the product from the trade dress and the trade dress is
arbitrary or suggestive). Thus, for example, designs customary
in the industry can not be inherently distinctive (nor for that
matter can they acquire secondary meaning). See Paddington, 996
F.2d at 583-84; Hanig & Co., 1994 WL 97758, at *6-*7; 1 NIMS, LAW
OF UNFAIR COMPETITION § 134a, at 379 (citing Rathbone, Sard & Co.,
189 F. 26); cf. Aromatique, 28 F.3d at 869-70 (per curiam)
(plurality opinion by Morris Sheppard Arnold, J.) (holding that
the plaintiff's pillow-shaped cellophane packages were not
inherently distinctive, because commonplace).
But the uniqueness of a product configuration is not
enough by itself to make the configuration inherently
distinctive. To be inherently distinctive, a product
configuration must also be conceptually separable from the
product, so that a consumer will recognize its symbolic
(signifying) character. This requirement ensures that consumers
unaware of any association of the product with a manufacturer
(i.e., where a configuration has no secondary meaning) will not
become confused about whether a particular configuration may be
trusted as an indicium of origin. To be conceptually separable,
the product configuration must be recognizable by the consumer
"as an indicium of source, rather than a decorative symbol or
pattern.. . ." Stuart Hall, 31 U.S.P.Q.2d at 1471 (internal
quotation marks omitted); see Hoffman, Trade Dress/Product
Simulation Overview, C913 ALI-ABA at 223 (contending that trade
dress is inherently distinctive only if "one can assume, without
proof, that it will automatically be perceived by customers as an
indicia [sic] of origin"); cf. MCCARTHY, TRADEMARKS AND UNFAIR
COMPETITION § 7.26, at 248 (suggesting that features perceived as
"merely ornamental" cannot serve as trademarks).
As with trademarks, an inherently protectable product
configuration must, at least conceptually, be "something other
than, and separate from, the merchandise." Davis v. Davis, 27 F.
490, 492 (C.C. Mass. 1886). That is, the configuration for which
protection is sought must not appear to the consumer as a mere
component, or the essence, of the product gestalt, but rather
must appear as something attached (in a conceptual sense) to
function in actuality as a source designator -- it must appear to
the consumer to act as an independent signifier of origin rather
than as a component of the good. See, e.g., In re General Tire &
Rubber Co., 404 F.2d 1396, 1398-99 (C.C.P.A. 1969) (affirming
denial of injunction because consumers would probably think of
product feature as ornamentation rather than as indicium of
source).
Third, to be inherently distinctive, it must be likely
that the product configuration will primarily serve as a
designator of the source of the product. See Chapman, Trade
Dress Protection, 387 PLI/PAT at 32 ("``Unique' is not by itself
equivalent to inherently distinct, but a unique design may be so
if it also functions as a source indicator."); supra at
typescript Error! Bookmark not defined.-Error! Bookmark not
defined. (rejecting Duraco's reading of Paddington). If the
configuration itself, separate from the product, is likely to
serve some substantial purpose other than as a designation of
origin -- that is, besides to set it apart from other sources'
products in consumers' minds -- then it cannot be inherently
distinctive, but must acquire secondary meaning before becoming
entitled to protection against copying. In this regard, a
source's intent in adopting the particular configuration is
highly probative. See Stuart Hall, 31 U.S.P.Q.2d at 1470 & n.2;
RESTATEMENT OF TORTS § 719 cmt. a (1938) ("[D]esigns intended solely
as ornamentations are not trade-marks . . .."); Joan L. Dillon,
Two Pesos: More Interesting for What It Does Not Decide, 83
TRADEMARK RPTR. 77, 85 (1993) (defining protectable trade dress as
"a combination of elements selected to identify origin, rather
than to serve as mere decor"); NIMS, LAW OF UNFAIR COMPETITION, at 370
("Peculiar and arbitrary features in the form, structure,
arrangement of parts, and general appearance of an article are
often devised, in large part to distinguish it -- to give it
individuality.").
The inquiry here does not duplicate that employed for
secondary meaning; instead of focusing on consumers' actually
acquired mental associations, the inquiry focuses on whether a
consumer would likely perceive the feature or combination or
arrangement of features as something that renders the product
intrinsically more desirable regardless of the source of the
product, or primarily as a signifier of the product's source.
Protecting a product configuration without a showing of secondary
meaning because the configuration is pleasant rather than because
it identifies the source of the product would risk seriously
transgressing the protective zones mapped by the patent laws.12
12
. In the design protection area, our construction of the
Lanham Act is informed to some degree by the concurrent existence
of the patent laws. See Digital Equip. Corp. v. Desktop Direct,
Inc., 114 S. Ct. 1992, 2002 (1994) (invoking the "familiar
principle of statutory construction that, when possible, courts
should construe statutes . . . to foster harmony with other
statutory and constitutional law"); cf. RESTATEMENT (THIRD) OF UNFAIR
COMPETITION § 16 cmt. b (Tent. Draft No. 2, Mar. 23, 1990)
("Rigorous application of the requirements of distinctiveness
. . . is essential in order to avoid undermining the carefully
circumscribed statutory regimes for the protection of useful and
ornamental designs under federal patent and copyright law."). It
would not be politic to enable easy circumvention of the strict
This is not to say that a configuration must be undesirable to be
eligible as an inherently distinctive product configuration; we
refer here only to the source-designating function of the
configuration.
Thus, if the feature as to which Lanham Act protection is
sought is likely to be notably desirable to consumers for some
reason other than its function as a source designator, it cannot
be considered inherently distinctive. Like a descriptive
trademark, such a nonfunctional product configuration would be
protectable only if the source-designating function of the
configuration is factually demonstrated with proof of secondary
meaning. So if the consumer is likely to be motivated, in some
more than incidental part, to buy a product because of a
particular combination or arrangement of features, other than
because that configuration signifies a source of the product, the
penumbra of the patent laws -- granting others a right to copy
what has been donated to the public domain -- will deny
protection unless secondary meaning is first shown.
The primarily source-designating inquiry is different
from the functionality inquiry in trade dress law, although it is
(..continued)
rules governing the grant of a patent by injudiciously affording
similar protections without even a showing of secondary meaning.
Cf. Keene Corp., 653 F.2d at 824, 827-28 (affirming an injunction
requiring only labeling, but not precluding copying, of a
functional design with secondary meaning -- relying on discussion
of the patent laws in Sears, Roebuck, 376 U.S. at 231-32, 84
S. Ct. at 788-89); American Greetings Corp., 807 F.2d at 1147(holding that an injunction must be "sufficiently narrow to avoid
affording underserved patent protection") (quoting Ideal Toy
Corp. v. Plawner Toy Mfg. Corp., 685 F.2d 78, 84 (3d Cir. 1982))
(internal quotation marks omitted).
motivated by similar concerns. Both are intended to protect
competition -- and hence consumers -- by restricting the types of
product features that may be insulated from copying.
Nevertheless, the primarily source-designating inquiry is
different from the functionality inquiry, for it limits
inherently distinctive product configurations not to those that
are not important for competitors to be able to copy, but rather
to those whose primary significance is as an intrinsic indicator
of the product's source.
We acknowledge that, to a large extent, how courts
resolve the inherent distinctiveness inquiry could, theoretically
at least, cause a snowballing effect. If product configurations
are easily protected, consumers might learn to rely on
configurations as source designators; if protection is rare,
consumers will disregard product configurations as source
designators, and no confusion will result. But partial
protection, if not carefully circumscribed, may eventually cause
even greater consumer confusion, as consumers will face
difficulties determining what features are legitimate source
designators (because inherently distinctive) and which are not.
The narrow test that we adopt encourages consumers to rely on a
product's configuration as a source designator only when it
rather plainly serves an identifying function.
We believe that the aforementioned requirements for
inherent distinctiveness, while nascent and in need of caselaw
development, allow a source genuinely intent upon using a
particular feature or configuration of its product to signify
itself as the source to do so -- at no meaningful cost to free
competition -- without having to prove consumer association
(secondary meaning). We turn to the application of this standard
to the facts of this case.
III. THE LAW APPLIED
Because the district court applied the Abercrombie &
Fitch trademark taxonomy (generic, descriptive, suggestive,
arbitrary, or fanciful) instead of the above standard, see mem.
op. at 12-14, we cannot let its finding of non-distinctiveness
stand. While this would normally result in a remand, we need not
remand if, with the evidence viewed in the light most favorable
to it, Duraco has failed to demonstrate a likelihood of success
on the merits. See In re Molded Acoustical Prods., Inc. (Fiber
Lite Corp. v. Molded Acoustical Prods., Inc.), 18 F.3d 217, 222 &
n.7 (3d Cir. 1994). We conclude that this is the case, for
Duraco's Grecian Classics planters plainly are not inherently
distinctive, and it has not shown the acquired distinctiveness
(secondary meaning) that it would otherwise need to establish in
order for its product configuration to be protectable.
A. Inherent Distinctiveness
We do not gainsay that the particular configuration of
Duraco's urn may be memorable and unusual. In this regard, we
disagree with the district court's conclusion that "all of the
urns introduced as exhibits . . . looked about the same, as did
those presented in drawings," mem. op. at 10. Instead, after
viewing most of the plastic planter designs introduced in the
district court, including the physical exhibits and drawings, we
believe that some definitely have a look that consumers could not
reasonably confuse with the Grecian Classics, Backyard Products,
or Cotswold planters. While mere distinguishability without more
is, as we have explained, insufficient to establish that a
product configuration is memorable and unusual in the sense that
it could be an inherently distinctive indicium of source, we
cannot say with certainty that Duraco's planters were not
memorable and unusual at the time that Joy introduced the
Ultimate Urns into interstate commerce.
Our review of course is deferential. But we need not run
out the string in our review of the district court's fact finding
in this respect for, at all events, we are satisfied that the
Grecian Classics' design rather clearly falls outside the
inherently distinctive category.
First, it is beyond peradventure that Duraco's alleged
protectable product configuration is not conceptually separable
from its plastic planters. Unlike an arbitrary carving etched
into the back of a chair to identify the source, for example, the
features of the Grecian Classics for which Duraco seeks
protection are designed to achieve the goal of having the planter
appear as if constructed of marble or stone, and thus constitute
part and parcel of the overall product.13
13
. It is apparent at this point that the definition of the
product market will have an important bearing on whether a
feature or combination or arrangement of features is conceptually
separable from the product. Here the district court impliedly
Second, consumers are likely to appreciate the Grecian
Classics' design, as the district court found to be the case,
primarily as an inherently attractive aspect of the product, not
as a source-indicator. Abundant and uncontroverted testimony
established that Duraco adopted its features to create the
appearance of a marble, stone, or cement Grecian or classical-
style urn, not to identify itself as the source. Indeed, Duraco
itself admits that consumers are largely motivated to purchase
Grecian Classics because of the aesthetic advantages of the
precise configuration for which it seeks protection. Moreover,
Joy imitated the Grecian Classics' design because of its
aesthetic appeal to consumers.
In sum, two of the requirements for inherent
distinctiveness not having been satisfied, we easily conclude
that Duraco's planter is not inherently distinctive.
B. Acquired Distinctiveness (Secondary Meaning)
The absence of inherent distinctiveness means that to
establish a likelihood of success on the merits of its trade
dress infringement claim, Duraco must prove secondary meaning,
which the district court found it had not done. See mem. op. at
14-16. Although the point is without difficulty, we will briefly
review it for clear error.
(..continued)
found that the appropriate product category was plastic
"classically styled urns" for plants, see mem. op. at 17, and, no
party having challenged that finding, we are not called upon to
review it or to provide the appropriate standards for
ascertaining it.
If a product's configuration is not inherently
distinctive, the plaintiff must prove acquired distinctiveness
via a showing of secondary meaning. Factors relevant to a
finding of secondary meaning in a product configuration include:
(1) plaintiff's advertising expenditures, measured primarily with
regard to those advertisements which highlight the supposedly
distinctive, identifying feature, see First Brands Corp. v. Fred
Meyer, Inc., 809 F.2d 1378, 1383 (9th Cir. 1987); (2) consumer
surveys linking the distinctive product configuration to a
particular, single source (although the identity of the source
need not be known); and (3) length and exclusivity of use.
Consumer surveys and testimony are probably the only direct
evidence of secondary meaning; the other sources are
circumstantial, though the plaintiff may rely solely on them.
See Aromatique, 28 F.3d at 871 (per curiam) (plurality opinion by
Morris Sheppard Arnold, J.) (secondary meaning for trade dress);
Woodsmith Publishing Co., 904 F.2d at 1249 (same); International
Kennel Club, Inc. v. Mighty Star, Inc., 846 F.2d 1079, 1086 (7th
Cir. 1988) (secondary meaning for trademark).
Sales success by itself will typically not be as
probative of secondary meaning in a product configuration case as
in a trademark case, since the product's market success may well
be attributable to the desirability of the product configuration
rather than the source-designating capacity of the supposedly
distinguishing feature or combination of features. And unlike
with a trademark, where repeated purchases of a product support
an inference that consumers have associated the mark with the
producer or source, one can much less confidently presume that a
consumer's repeated purchase of a product has created an
association between a particular product configuration and the
source. Cf. International Jensen, 4 F.2d at 824 (product
configuration) ("While evidence of a manufacturer's sales,
advertising and promotional activities may be relevant in
determining secondary meaning, the true test of secondary meaning
is the effectiveness of this effort to create it."); Braun, Inc.,
975 F.2d at 826-27 (product configuration) (same); First Brands
Corp., 809 F.2d at 1383 (product packaging) (same); American
Footwear Corp. v. General Footwear Co., 609 F.2d 655, 663 (2d
Cir. 1979) (trademark) (same).
The very fact that a consumer could identify the source
based on the product's configuration implies that the
configuration is at least somewhat unusual, and this
"distinctiveness" of the product itself may be the source of the
motivation to purchase if a consumer does not care about who the
source is. In this respect product configuration again differs
dramatically from trademark and from product packaging, since the
success of a particular product -- especially if similar
competing products exist -- does not readily lead to the
inference of source identification and consumer interest in the
source; it may well be that the product, inclusive of the product
configuration, is itself inherently desirable, in a way that
product packagings and trademarks are not. Similarly,
unsolicited media coverage may reflect interest more in an
unusual product than in the source of the product.
Analogously, attempts to copy a product configuration
will quite often not be probative: the copier may very well be
exploiting a particularly desirable feature, rather than seeking
to confuse consumers as to the source of the product. See
Aromatique, 28 F.3d at 871 (per curiam) (plurality opinion by
Morris Sheppard Arnold, J.); Braun, Inc., 975 F.2d at 827; supra
at typescript Error! Bookmark not defined.-34; cf. Brown, Design
Protection: An Overview, 34 U.C.C.A. L. REV. at 1384-85
(observing that the act of copying a product configuration does
not ipso facto involve false representation). The inference of
unfair competition will be even weaker where the copier takes
conspicuous steps -- whether in packaging, trademark, marketing
techniques, or otherwise -- to distinguish its product from its
competitor's.
In sum, secondary meaning in a product configuration case
will generally not be easy to establish. We note, however, that
in certain circumstances, e.g., with respect to drugs or pills
with unusual colors and/or shapes, a consumer may be more likely
to rely on the product's configuration as a source designator,
and the consumer may thereby have become sensitized, so that
secondary meaning will be easier to establish. This may be the
case if the good is one with some features of importance to a
consumer's choice that a consumer ordinarily cannot recognize in
the market (such as the safety and efficacy of a drug) and one in
which, because of the nature of the product's use or consumption,
identifying source designations might not readily be prominently
displayed. Cf. Sinko, 105 F.2d at 453 (stating that with
products like drugs, where the efficiency of the product depends
greatly upon the maker's capacity, consumers would care more
about the pills' manufacturer than the appearance of the drug
itself).
With respect to Duraco's Grecian Classics, we fully
concur in the district court's finding of no secondary meaning.
Duraco in its survey has not shown any consumer association
between the Grecian Classics planters and a particular source;
instead, its plastic planters are purchased because consumers
(whether retail or wholesale) find them innately desirable,
probably because of their pleasing "attic shape."14 Moreover,
the evidence indicates without contradiction that Joy emulated
Duraco's design because Joy believed it to be a superior one, not
to trade on Duraco's non-existent good will in the Grecian
Classics' configuration.
In addition, Duraco has not emphasized its alleged trade
dress in its advertising, relying instead primarily on small
depictions of the entire product. Finally, Duraco exclusively
sold planters with the "Grecian Classics look" for at most five
years, not so long a time as to raise a strong inference of
consumer association with a single source. Therefore, because
14
.
O Attic shape! Fair attitude! with brede
Of marble men and maidens overwrought,
With forest branches and the trodden weed;
Thou, silent form! dost tease us out of thought
As doth eternity: Cold Pastoral!
John Keats, Ode on a Grecian Urn (excerpt from last stanza).
the district court was correct and a fortiori not clearly
erroneous, we will affirm its finding of no secondary meaning.
IV. CONCLUSION
Applying the standard that this opinion has articulated
for determining whether product configurations are inherently
distinctive, we have concluded, viewing the evidence in the light
most favorable to Duraco, that Duraco's Grecian Classics plastic
planters are not inherently distinctive. We have further
concluded that the district court was not clearly erroneous in
finding that Duraco has failed to show secondary meaning. Thus,
having demonstrated neither inherent nor acquired
distinctiveness, Duraco has not established a likelihood of
success on the merits of its Lanham Act action for trade dress
infringement. For the foregoing reasons, we will affirm the
district court's order denying Duraco's motion for a preliminary
injunction. The district court's further proceedings resolving
the case on final hearing will, of course, be conducted
consistently with this opinion.