In evaluating the distinctiveness of a mark under the Lanham Act, 15 U.S.C.S. § 1052 (and therefore, by analogy, under 15 U.S.C.S. § 1125(a)), courts hold that a mark can be distinctive in one of two ways. First, a mark is inherently distinctive if its intrinsic nature serves to identify a particular source. In the context of word marks, courts apply the now-classic test, in which word marks that are "arbitrary," "fanciful," or "suggestive" are held to be inherently distinctive. Second, a mark has acquired distinctiveness, even if it is not inherently distinctive, if it has developed secondary meaning, which occurs when, in the minds of the public, the primary significance of a mark is to identify the source of the product rather than the product itself.
Respondent Samara Brothers, Inc., designs and manufactures a line of children's clothing. Petitioner Wal-Mart Stores, Inc., contracted with a supplier to manufacture outfits based on photographs of Samara garments. After discovering that Wal-Mart and other retailers were selling the so-called knockoffs, Samara brought this action for, inter alia, infringement of unregistered trade dress under § 43(a) of the Trademark Act of 1946 (Lanham Act). The jury found for Samara. Wal-Mart then renewed a motion for judgment as a matter of law, claiming that there was insufficient evidence to support a conclusion that Samara's clothing designs could be legally protected as distinctive trade dress for purposes of § 43(a). The District Court denied the motion and awarded Samara relief. The Second Circuit affirmed the denial of the motion.
In an action for unregistered trade dress infringement, is a producer required to prove secondary meaning in order to establish distinctiveness?
The Court reversed and remanded, holding that, in an action for unregistered trade dress infringement, a producer was required to prove secondary meaning in order to establish distinctiveness. The Court held that the Lanham Act required a producer to show that an allegedly infringing feature was not functional, that it was likely to cause confusion with the product for which protection was sought, and that it was distinctive. The Court held that a product design, like color, could not be inherently distinctive, i.e., arbitrary, fanciful, or suggestive, but that it could become distinctive if it developed a secondary meaning, which occurred when, in the minds of the public, the primary significance of the mark was to identify the source of the product rather than the product itself.