Wallace Int'l Silversmiths, Inc. v. Godinger Silver Art Co. - 916 F.2d 76 (2d Cir. 1990)

Rule:

In order to maintain an action for trade dress infringement under § 43(a) of the Lanham Act, 15 U.S.C.S. § 1125(a), a plaintiff must show that its trade dress has acquired secondary meaning - that is, the trade dress identifies the source of the product - and that there is a likelihood of confusion between the original trade dress and the trade dress of the allegedly infringing product. Even if the plaintiff establishes the elements, the defendant may still avoid liability on a variety of grounds, including the so-called functionality doctrine. In general terms, the doctrine is that a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.

Facts:

Appellant Wallace International Silversmiths filed an action against appellee Godinger Silver Art Co., Inc. for trade dress infringement under § 43(a) of the Lanham Act, 15 U.S.C.S. § 1125(a). Appellant alleged that appellee's ornamental design on its silverware was substantially similar to appellant's GRANDE BAROQUE line, and requested a preliminary injunction. The trial court denied appellant's motion, holding that the design was a functional feature of Baroque style silverware and ineligible for protection. Appellant challenged the decision.

Issue:

Was appellant’s design a functional feature of Baroque style silverware, and therefore, ineligible for protection?

Answer:

Yes

Conclusion:

On appeal, the court affirmed, holding that appellant failed to establish that the design affected the cost or quality of the silverware under the functionality doctrine. The court found that bestowing trade dress protection would have hindered competition. The similarities between appellant's and appellee's design involved elements common to all baroque-style designs in the silverware market. Appellant was not able to exclude competitors from using basic design elements which were necessary to compete in the silverware market.