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Section 43(a) of the Lanham Act, specifically 15 U.S.C.S. § 1125(a) protects from infringement the unregistered trade dress of a product. To recover for trade dress infringement under 15 U.S.C.S. § 1125(a), a party must prove by a preponderance of the evidence: (1) that the trade dress in question is distinctive in the marketplace, thereby indicating the source of the good it dresses, (2) that the trade dress is primarily nonfunctional, and (3) that the trade dress of the competing good is confusingly similar. The first two elements are the requirements for protectability, and the third element is the standard for evaluating infringement.
Abercrombie & Fitch Stores, Inc. ("A&F") sued American Eagle Outfitters to stop American Eagle from infringing what A&F described as its unregistered “trade dress,” made protectable by Section 43(a) of the Lanham Act. A&F claimed that American Eagle impermissibly copied the designs of certain articles of clothing, in-store advertising displays, and a catalog. The district court granted summary judgment in favor of American Eagle, reasoning that A&F had sought protection for something that did not constitute trade dress at all. A&F timely appealed.
The court noted that the trade dress A&F sought to protect was (1) the designs of the goods themselves, (2) the design of the catalog created to sell its products by, among other things, cultivating an image it wanted consumers to associate with its products, and (3) features of its in-store presentation associated with the sale of its products. The court stated that the district court erred in treating the suit as an attempt to protect a marketing theme. In sum, the three "things" A&F sought to protect constituted trade dress. However, A&F’s clothing designs and its in-store presentation were not protectable because they were functional, despite their distinctiveness. Granting protection would prevent effective competition in the market. As for the catalog, the court concluded that A&F could not carry its burden of proving that American Eagle’s catalog was confusingly similar to what the court presumed was the protectable trade dress of the catalog.