CHAPTER 11 - § 11.03

• Jurisdiction: United States

§ 11.03 LACK OF DISTINCTIVENESS

The second necessary element for establishing trade dress infringement is proof that the design is "inherently distinctive or has acquired secondary meaning."⁷⁵ It follows that a lack of distinctiveness is an excellent defense, as it is ultimately fatal to trade dress infringement claims. In 1992, the Supreme Court's Two Pesos decision held that "proof of secondary meaning is not required to prevail on a claim under § 43(a) of the Lanham Act where the trade dress at issue is inherently distinctive."⁷⁶ Then, in 2000, the Supreme Court's Wal-Mart decision held that "a product design cannot be protected under § 43(a) without a showing of secondary meaning."⁷⁷ The end result is that product packaging can be inherently distinctive, and thus proof of secondary meaning is not necessarily required. By the same token, product configuration and product color cannot be inherently distinctive, and thus proof of secondary meaning is vital.

[1]—Inherent Distinctiveness

Trade dress may be inherently distinctive if its intrinsic qualities identify the trade dress features with a particular source.⁷⁸ The Seabrook Test supplies four factors for determining inherent distinctiveness:

1. Whether it was a "common" basic shape or design

2. Whether it was unique or unusual in a particular field

3. Whether it was a mere refinement of a commonly adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods

4. Whether it was capable of creating a commercial impression distinct from the accompanying words⁷⁹

When charged with trade dress infringement, a defendant would be wise to wield these factors to show that trade dress in question is not inherently distinctive (i.e., that the trade dress is a common basic shape, that the trade dress is not unique in the field, etc.). Below are the images of the competing trade dress in the Seabrook case.

Seabrook had opposed the registration of Bar-Well's Arctic Gardens mark, and the opposition had been dismissed at the U.S. Patent and Trademark Office (USPTO).⁸⁰ The Court of Customs and Patent Appeals affirmed the dismissal of the opposition, finding that the design portion of Seabrook's mark was not inherently distinctive.⁸¹ While the court did not address each of these four factors in detail in Seabrook, it did find that "Seabrook's design is more akin to [a] decorative panel . . . which [serves] as background for the word portion of the mark."⁸² The court also found that Bar-Well persuasively wielded "evidence of third-party uses and registrations of similar marks on frozen foods, indicating that Seabrook's 'oval' design is not unique in this field."⁸³ Concerning the fourth Seabrook factor, the court noted that "[t]he design is never displayed alone (apart from the words 'Seabrook Farms')."⁸⁴

While some courts employ the Seabrook test for determining inherent distinctiveness with respect to trade dress, others eschew it in favor of the Abercrombie "spectrum" test traditionally used for trademarks.⁸⁵ The Abercrombie test seeks to classify trademarks and trade dress over a spectrum including four categories: generic, descriptive, suggestive, and arbitrary; only those marks or dress falling into the last two categories are considered inherently distinctive. For example, the Second and Sixth Circuits have stuck to the Abercrombie "spectrum" test over Seabrook.⁸⁶

As discussed in Chapter 2, the way in which trade dress is characterized (by both plaintiff and defendant) can play a key role in the outcome of any case. In general, plaintiffs should endeavor to characterize their trade dress as product packaging (when feasible), to avoid the burden of proving secondary meaning. Conversely, defendants should characterize trade dress as product configuration (again, when feasible) to place the burden of proving secondary meaning on the trade dress owner. Secondary meaning is shown through long and exclusive use associated with the particular goods or services causing the public to associate the goods or services with a particular source.⁸⁷ Thus, in situations where the trade dress has only recently been introduced, or where sales and advertising of the trade dress have been relatively insubstantial, the burden of proving secondary meaning can sink a case before confusion is even considered. Adding to this burden on plaintiffs is the...