The protection against infringement provided by § 43(a) of the Lanham Act is not limited to goods, services or commercial activities protected by registered trademarks. It extends as well, in certain circumstances, to the unregistered trade dress of an article. Trade dress refers to the image and overall appearance of a product. It embodies that arrangement of identifying characteristics or decorations connected with a product, whether by packaging or otherwise, intended to make the source of the product distinguishable from another and to promote its sale.
Ferrari S.P.A. Esercizio (Ferrari) (plaintiff) was a luxury-automobile manufacturer with a reputation for producing exclusive vehicles with distinctive designs, including the Daytona Spyder and the Testarossa. Carl Roberts (defendant) began manufacturing and selling kits that would allow budget-conscious car enthusiasts to copy the exterior design of Ferrari’s Spyder and Testarossa onto the undercarriage of less expensive vehicles. Roberts marketed his kits as the Miami Spyder and the Miami Coupe. Ferrari brought a trademark-infringement suit against Roberts. The district court ruled in favor of Ferrari and issued a permanent injunction against Roberts, enjoining Roberts from manufacturing and selling the Miami Spyder and Miami Coupe kits. Roberts appealed.
Is an action for trademark infringement in connection with defendant's sale of replicas of plaintiff's sports cars proper?
The court held that plaintiff properly brought an action pursuant to the Lanham Act. The court found that plaintiff's automobiles had acquired secondary meaning in the minds of the buying public. The court also found there was a likelihood of confusion based on defendant's intentional copying of plaintiff's design. The court agreed with the district court that the unique exterior design and shape of plaintiff's vehicles were their "mark" or "trade dress" which distinguished the vehicles' exterior shapes as more than distinctively attractive designs. The court also agreed with the district court that defendant's admission that he intentionally copied plaintiff's design, along with other evidence, amounted to abundant evidence that the exterior design features of the plaintiff's vehicles were "trade dress" which had acquired secondary meaning.