CHAPTER 3 - § 3.06

• Jurisdiction: United States

§ 3.06 SECONDARY MEANING PRIOR TO 1992

During this period, trade dress was considered to have achieved secondary meaning, when "the purchasing public [associated] the dress with a particular source"¹⁴² "rather than just the product itself."¹⁴³ Secondary meaning was shown by evidence of the length of use of the trade dress, the buyer's association of the trade dress with a particular entity, and the extent of sales and advertising utilizing the trade dress.¹⁴⁴

As mentioned above, Fuddruckers was one of the first cases to actively discuss the possibility that trade dress could be "inherently distinctive" and thus that proof of secondary meaning was not necessary. Some scholars suggest that the move toward inherent distinctiveness may have started at least six years earlier, with the Fifth Circuit decision in Chevron v. Voluntary Purchasing.¹⁴⁵ The court in Chevron held that trade dress should be categorized on the Abercrombie scale (which ranges from generic to arbitrary), just as trademarks are evaluated. In particular, the court stated:

[T]rademark law requires a demonstration of "secondary meaning" only when the claimed trademark is not sufficiently distinctive of itself to identify the producer. The same principles should apply to the protection of trade dresses. If the features of trade dress sought to be protected are arbitrary and serve no function either to describe the product or assist in its effective packaging, there is no reason to require a plaintiff to show consumer connotations associated with such arbitrarily selected features.¹⁴⁶

In any event, there is no question that a move toward subsuming the concept of inherent distinctiveness into trade dress law began in this period and culminated in the Supreme Court decision in Two Pesos.

Other factors that were relevant to the secondary meaning analysis included evidence of deliberate copying, and advertising sales.¹⁴⁷ In Time, the Southern District Court of New York found that the defendant's deliberate copying of the People magazine cover and format was "proof that the design [had] acquired secondary meaning."¹⁴⁸ The court went as far as to state that the defendant "came as close as it possibly could to the People logo," such that the only distinguishing feature was the title of the magazine.¹⁴⁹ The court in Reader's Digest found similarly, namely that the "striking" similarities between the covers of Reader's Digest magazine and Conservative Digest magazine were "probative of intentional...