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Section 43(a) of the Lanham Act, 15 U.S.C.S. § 1125(a), creates a federal cause of action for trade dress infringement. "Trade Dress" involves the total image of a product and may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques." To prevail on a trade dress infringement claim under § 43(a), a plaintiff must prove three elements: 1) its trade dress is inherently distinctive or has acquired secondary meaning, 2) its trade dress is primarily non-functional, and 3) a defendant's trade dress is confusingly similar.
Appellee Isaly Company, Inc. brought suit, alleging the trade dress of appellant's ice cream bar infringed on appellee's trade dress rights under § 43(a) of the Lanham Act and trademark rights under § 32(1)(a) of the Act. The trial court held that appellant had violated appellee's rights and entered an injunction prohibiting appellee from using certain similar labeling techniques, including the use of a pebbled foil wrapper bearing a label featuring the color royal blue. Appellant challenged the trial court's decision.
Did the appellant infringe the appellee’s trade dress rights, thereby justifying the grant of injunction in favor of the appellee?
The court held that appellant infringed on appellee's rights based on false representations, as illustrated by appellant's ice cream bar wrapper's confusing similarity to appellee's ice cream bar wrapper. The court affirmed the portion of the injunction prohibiting appellee's placement of a similar polar bear on its wrapper but reversed the overly broad portion of the injunction prohibiting appellant's use of royal blue labeling, as appellant could not be foreclosed from using any particular color.